- A District of Columbia decision ruling that litigation hold notices issued to a defendant’s employees did not qualify as privileged or subject to work product protection;
- A Western District of New York opinion in which the District Judge, exasperated by the parties’ conduct of e-discovery, developed a set of search terms that he ordered the plaintiff to use in searching all its computers and servers;
- A Virginia Circuit Court decision ruling that the passcode on a defendant’s cellular phone was testimonial evidence subject to the Fifth Amendment’s privilege against self-incrimination but that a fingerprint used to access a cellular phone was not protected because its production did not require the defendant to divulge his mental processes; and
- An Eastern District of Tennessee decision ordered a defendant to produce video of an accident, rejecting the defendant’s argument that a potential violation of a software licensing agreement was a valid basis for refusing to produce discoverable evidence.
1. In United States ex. rel. Barko v. Halliburton Co., 2014 U.S. Dist. LEXIS 162680 (D.D.C. Nov. 20, 2014), U.S. District Judge James S. Gwin ruled that litigation hold notices issued to defendant’s employees did not qualify as privileged or subject to work product protection and should be produced.
In this qui tam matter, the plaintiff-relator challenged various defense privilege claims. Defendants moved for a protective order and submitted the challenged documents to the court for in camera review. One category of documents at issue was litigation hold notices issued by Kellogg, Brown & Root’s (KBR) CEO and Vice President of the Legal Department to a large group of employees instructing them to preserve certain documents in connection with government investigations. The defendant claimed these notices were not discoverable on attorney-client-privilege and attorney work-product grounds.
Noting that the issue was a “close one” and that other courts had found litigation notices to be protected, District Judge Gwin ruled that neither the attorney-client privilege nor the work-product doctrine applied to the litigation hold notices in this case. Judge Gwin rejected the claim of attorney-client privilege because “KBR has . . . failed to demonstrate the intent to keep these communications confidential.” Id. at *15. He pointed out that KBR did not require that the hold notices be shared “no more widely than necessary;” to the contrary, the notices at issue “were sent to large groups such as ‘all KBR employees,’” and employees were encouraged to share the notices with others who may not have received or read the first notice. Id.
Judge Gwin also rejected KBR’s claim that the litigation hold notices were protected as attorney work product. The Judge stated at the outset that the doctrine may not apply, given that the notices were sent by KBR’s CEO and “can fairly be said to merely describe KBR’s document retention practices, rather than relate [to] any attorney’s preparations for litigation.” Id. at *17. Regardless, Judge Gwin found the notices distinguishable from typical notices protected from discovery by other courts because, unlike those notices, KBR’s notices described disclosures that KBR had made to the government and a subpoena that KBR received. Id. at *18-*19. Judge Gwin stated that the documents produced in response to the subpoena would be discoverable, and the notices themselves would provide the plaintiff with “information about what steps KBR took to comply with the subpoenas. Since the litigation hold notices here are themselves relevant, this case is distinguishable from those considering more generic litigation holds.” Id. The Court concluded that the litigation notices in this case were not protected and ordered their production.
2. In Armstrong Pump, Inc. v. Hartman, 2014 WL 6908867 (W.D.N.Y. Dec. 9, 2014), Magistrate Judge Hugh B. Scott expressed exasperation with counsel over various e-discovery battles and ordered the plaintiff to search all its computers and servers using a set of terms that he developed and required defense counsel to provide an affidavit that defendant had complied with all discovery requests or to file a motion for a protective order to quash any outstanding discovery requests.
Defendant (Optimum) granted plaintiff a license for factory, but not field, implementation of its technology. Plaintiff (Armstrong) sued for breach of the license agreement, and Optimum counterclaimed, arguing that Armstrong exceeded its rights under the license agreement by providing the technology to companies with existing operations, that is, field implementation, of Optimum’s technology. Id. at *1-*2. The case dragged on for 4½ years prior to the filing of the motions at issue, leading the Magistrate Judge to bemoan the “continual and growing animosity between the parties, an animosity that has slowed the progress of the case and that has required repeated judicial intervention.” Id. at *5. The Magistrate Judge granted two motions to compel prior to the motion at issue, and had previously “cautioned Armstrong ‘not to engage in piecemeal production.’” Id. at *2. Armstrong made nine document productions between the Magistrate Judge’s ruling on the first motion to compel and the motion at issue. Id. at *3.
During a deposition, an Armstrong witness discussed details that “would reveal the extent to which Armstrong directly or indirectly marketed [products using the patented technology] to potential clients.” Id. This deposition led to contentious correspondence between the parties in which Optimum accused Armstrong of underestimating the number of its employees with relevant marketing experience. Id. Optimum filed the motion at issue, arguing that Armstrong was “hiding or at least delaying information about unauthorized sales.” Id. Optimum noted that Armstrong’s recent productions included documents responsive to three-year old document requests and sought sanctions and an order to compel further responses. Id.
Magistrate Judge Hugh B. Scott recounted the latest back-and-forth sniping between the parties and stated: “Enough.” Id. at *6. Reasoning that “Armstrong has not sufficiently explained its continuation of piecemeal discovery in the face of a Court order,” Magistrate Judge Scott took the extraordinary step of fashioning a list of phrases which, from the motion papers, “appear . . . [to] refer to or hint at the [licensed t]echnology” and ordered that Armstrong search “ALL corporate documents, files, communications and recordings for EACH of the . . . phrases” for the past 10 years. Id. He stated that the search and production must be completed by April 1, 2015 “with absolutely no exceptions or extensions” and further ordered that “Armstrong and all of Armstrong’s counsel of record will file a sworn statement confirming that Armstrong made a good-faith effort to” comply with the court’s order, and warned that “failure to comply will lead to sanctions under Rule 37(b)(2)(A).” Id. at *6.
Demonstrating that his irritation applied to both parties, the Magistrate Judge warned that he would take the same approach with Optimum and ordered counsel for Optimum file a joint sworn statement by January 14, 2015 that Optimum had complied with all Armstrong’s discovery requests or to file a motion for a protective order to quash any Armstrong discovery request that Optimum opposed. Id. at *7.
3. In Virginia v. Baust, 2014 WL 6709960 (Va. Cir. Oct. 28, 2014), Judge Steven C. Frucci granted in part the Commonwealth’s motion to compel a criminal defendant to produce the passcode or fingerprint to access his cellular phone, ruling that the passcode was testimonial evidence subject to the Fifth Amendment’s privilege against self-incrimination but that the fingerprint was not protected because its production did not require the defendant to divulge his mental processes.
The defendant was charged with assaulting a woman in the bedroom of his house. Id. at *1. The victim stated that the defendant maintained a video recording device in his bedroom that transmitted footage to his cellular phone, and that the defendant had previously sent her video footage via text message. Id. Both the victim and defendant affirmed that the video recording device “could have possibly” recorded the alleged assault and that the recording “may exist” on the defendant’s cellular phone.” Id. Pursuant to a search warrant executed several days later, the police were able to recover the cellular phone, several video recording devices and other items belonging to the defendant. Id. The cellular phone was encrypted, however, and could not be accessed without the defendant’s passcode or fingerprint. Id.
The Commonwealth moved to compel the defendant to produce the passcode or fingerprint to his cellular phone. Id. The defendant objected, arguing that the passcode and fingerprint were “testimonial communication[s]” subject to the defendant’s Fifth Amendment privilege against self-incrimination. Id. The Commonwealth responded that the passcode and fingerprint were not testimonial because “the existence of the recording [wa]s a ‘foregone conclusion.’” Id.
The Court noted that the Fifth Amendment provides that no person “shall be compelled in any criminal case to be a witness against himself.” Id. (citing U.S. CONST. amend. V) (internal quotations omitted). “[T]he privilege protects an accused only from being compelled to testify against himself, or otherwise provide the State with evidence of a testimonial or communicative nature.” Baust, 2014 WL 6709960, at *1 (quoting U.S. v. Wade, 388 U.S. 218, 221 (1967)) (internal quotations omitted). Thus, according Judge Frucci, the “proper inquiry” under the Fifth Amendment in the context of a motion to compel was whether granting the motion “would require (1) compulsion of a (2) testimonial communication that is (3) incriminating.” Baust, 2014 WL 6709960, at *1 (quoting U.S. v. Authement, 607 F.2d 1129, 1131 n.1 (5th Cir. 1979)) (internal quotations omitted). An act is testimonial when the defendant is forced to reveal his mental processes—i.e., “his knowledge of facts relating him to the offense or . . . his thoughts and beliefs.” Baust, 2014 WL 6709960, at *2 (quoting U.S. v. Kirschner, 823 F. Supp. 2d. 665, 668 (2010)) (internal quotations omitted).
The Court denied the Commonwealth’s motion insofar as it sought the defendant’s passcode, but granted the motion’s request for his fingerprint. Id. at *3. The Court held that the defendant’s passcode could only be divulged through his mental processes because “it [wa]s not known outside of [the d]efendant’s mind,” and thus was testimonial evidence protected from compelled disclosure under the Fifth Amendment’s privilege against self-incrimination. Id. By contrast, the Court held that disclosing the defendant’s fingerprint “d[id] not require [the defendant] to divulge anything through his mental processes,” and thus the evidence was non-testimonial in nature. Id. Accordingly, the Court held that the fingerprint was not protected under the Fifth Amendment and ordered the defendant to provide the fingerprint to unlock the cellular phone. Id.
4. In Pero v. Norfolk Southern Ry., Co., 2014 WL 6772619 (E.D. Tenn. Dec. 1, 2014), Magistrate Judge C. Clifford Shirley ordered the tort defendant to produce video of the plaintiff’s alleged accident, rejecting the defendant’s argument that a potential violation of a software licensing agreement was a valid basis for refusing to produce discoverable evidence.
The plaintiff sued his employer for injuries allegedly incurred while he was attempting to remove a tree blocking railroad tracks. Id. at *1. Although the parties agreed that relevant information (e.g., the position of the tree) likely was captured on video by a “RailView” camera, the defendant refused to produce the video “because of perceived licensing issues with the software used to view RailView recordings.” Id. After the plaintiff moved to compel the production of the video, the defendant proposed that the plaintiff either (i) view the video at the defendant’s counsel’s office or (ii) purchase his own software license for $500. Id.
The Court addressed the conditions that a producing party can attach to a production. Id. at *2. Judge Shirley noted that, under Federal Rule of Civil Produce 34, “any designated documents or electronically stored information . . . stored in any medium from which information can be obtained either directly or, if necessary, after translation by the responding party into a reasonably usable form.” Id. (quoting Fed. R. Civ. P. 34(a)(1)(A)). Further, the Court stated that “if a requesting party does not specify a form for producing electronically stored information, then [Rule 34 requires] the responding party to . . . produce it in a form or forms in which it is ordinarily maintained or in a reasonably usable form or forms.” Id. (quoting Fed. R. Civ. P. 34(b)(2)(E)(ii)) (internal quotations omitted).
The Court found that the defendant’s arguments against producing the video were “not well-taken” because “Rule 34 clearly envisions that the responding party will bear reasonable burdens in producing discoverable materials in its possession.” Id. at *3. The Court noted that the defendant’s situation was hardly “unique” in that “[p]olice cruiser cameras, store cameras and surveillance cameras often use unique operating software, which is almost always embedded with additional information—date, location, usage of lights or other tools—but the existence and use of this software cannot [insulate] against production.” Id. As “the Defendant certainly envisioned the recordings produced by RailView being used in litigation or other claims against it,” the Court held that the defendant could not “use its choice to enter into a software agreement as a shield against producing a relevant piece of discovery, nor can [the defendant] use the agreement as a basis for attaching burdensome conditions to the production of the recording.” Id.
Accordingly, the Court—consistent with orders of other courts involving similar situations—ordered the defendant to either (i) “provide the Plaintiff with a laptop computer loaded with the video recording and the software for viewing the recording, which would be used only for that litigation and returned after the litigation,” or (ii) “request that the Plaintiff procure a software license and the Defendant would then reimburse Plaintiff for the costs of that license, within thirty (30) days of its procurement.” Id.
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The E-Discovery Task Force of Sidley Austin LLP
The legal framework in litigation for addressing the explosion in electronic communications has been in flux for a number of years. Sidley Austin LLP has established an “E-Discovery Task Force” to stay abreast of and advise clients on this shifting legal landscape. An inter-disciplinary group of more than 25 lawyers across all our domestic offices, the Task Force monitors and examines issues and developments in the law regarding electronic discovery. The Task Force works seamlessly with our firm’s Litigators who regularly defend and prosecute all types of litigation matters in trial and appellate courts, federal and state agencies, arbitrations, and mediations throughout the country. The co-chairs of the E-Discovery Task Force are: Alan C. Geolot (+1.202.736.8250, email@example.com), Robert D. Keeling (+1.202.736.8396, firstname.lastname@example.org) and Colleen M. Kenney (+1.312.853.4166, email@example.com).
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