This Sidley Update addresses the following recent developments and court decisions involving e-discovery issues:
- a decision from the U.S. District Court for the Southern District of New York requiring a party to remove redactions of nonresponsive content and reproduce full same-day text message chains without the redactions
- an order from the U.S. District Court for the District of New Mexico denying a motion to compel reproduction of electronically stored information (ESI) requiring special software in a different format, finding the ESI accessible because the necessary software was widely available
- a ruling from the U.S. District Court for the District of Connecticut granting a motion to compel a party to revisit its production despite averring it was complete, finding that the movant had identified specific evidence calling into question the party’s contention that no further responsive documents exist
- an opinion from the U.S. District Court for the Western District of New York finding a party’s redaction of nonresponsive material inappropriate because the party had not identified any “special circumstances” to permit the redactions
In this action involving claims for false designation of origin, false advertising, slander of title, and deceptive trade practices, Plaintiff, a social justice organization, alleged that one of its founders seized internet domain names and used them to steal donations. Id. at *1.
After the parties exchanged productions of text messages and Twitter direct messages, Defendants learned that Plaintiffs had redacted text messages within same-day text chains. Id. at *2. Defendants claimed that the parties’ agreement required Plaintiffs to produce all text messages in the same chain on the same day whenever there was a text message within the chain that hit on one of the agreed-on search terms. Plaintiffs disagreed, claiming that the parties’ agreement was to produce only those messages from the same-day period that were responsive or provided context for a responsive text message. Following an unsuccessful meet-and-confer process, Defendants filed a motion to compel Plaintiffs to produce unredacted copies of all text messages in the same chain that were sent or received within the same day.
Magistrate Judge Stein began his analysis with an overview of how text messages are treated in discovery; he explained that texts “are an increasingly common source of relevant and often critical evidence in twenty-first century litigation.” But he noted that text messages do not “fit neatly into the paradigms for document discovery embodied by Rule 34 of the Federal Rules of Civil Procedure,” which was updated in 2006 to include ESI as distinct from hard-copy documents at a time when email was the dominant form of electronic communication. He stated that unlike text messages, email “at least retains a resemblance to conventional documents in that each email or email chain can be viewed as a single, identifiable ‘“document.’”
Magistrate Judge Stein explained that federal courts have adopted different approaches to text messages, including as to the question of whether each individual text message or the entire text chain should be viewed as a “document.” Id. at *2-3. He noted that some courts have required parties to produce “the entirety of a text message conversation that contains at least some responsive messages, while others have held that a party “can unilaterally withhold portions of a text message chain that are not relevant.” Id. at *3. Finally, he noted that some courts take a middle ground of requiring a party to produce a certain number of text messages immediately preceding and immediately following any responsive text message.
Magistrate Judge Stein noted that Rule 29(b) specifically affords parties the flexibility to design their own, mutually agreed-on protocols for handling discovery and that “[l]itigants are free to — and are well-advised to — mitigate the risk of this uncertain legal regime by coming to their own agreement about how to address text messages in discovery.” He concluded that an agreed-on protocol is “particularly sensible” for cases where the parties will exchange text messages because “the parties are better positioned than the court to customize a discovery protocol that suits the needs of the case given their greater familiarity with the facts, the likely significance of text message evidence, and the anticipated volume and costs of the discovery.”
Regarding the parties’ agreement in this case, Magistrate Judge Stein explained that the parties agreed to apply search terms to text messages and review “all messages in the same chain sent or received the same day, regardless of whether the initial text message that hit on the search term was responsive and relevant.” Id. at *4. But he noted that the parties did not explicitly address whether nonresponsive texts in a same-day text chain needed to be produced in their entirety or whether they could be redacted, and it was clear from the record that the parties had different understandings on this question.
Turning to the resolution of this question, Magistrate Judge Stein prefaced his decision with the clarification that he was “filling a gap in the parties’ incomplete agreement” as opposed to determining the “right answer” to the “redaction question” in the abstract. Id. at *5. He explained that the “default rule” regarding the issue of redactions from text messages was supplied by a prior decision from the district judge in the case Al Thani v. Hanke, No. 20 Civ. 4765 (JPC), 2022 WL 1684271 (S.D.N.Y. May 26, 2022), in which the court found that “parties may not unilaterally redact otherwise discoverable” information from text messages for reasons other than privilege. Magistrate Judge Stein found that “[i]t should have been clear to Plaintiffs that Al Thani operated as a default rule forbidding redactions in text message chains absent a judicial decision, or an agreement by Defendants, permitting redactions.” He held that if “Plaintiffs wanted to make redactions without Defendants’ agreement, Plaintiffs needed to seek court permission to do so” and that “Plaintiffs were not free to decide on their own that redactions to Plaintiffs’ production were appropriate.”
In reaching this conclusion, Magistrate Judge Stein also relied on the decision in In re Actos Antitrust Litigation, 340 F.R.D. 549 (S.D.N.Y. 2022), in which the court found that the defendant had inappropriately used email threading in its production because the parties’ discovery protocol did not permit threading. The court in Actos found that threading precluded the receiving party from accessing metadata associated with earlier emails in a chain and that the plaintiffs had been denied the opportunity to negotiate an approach to threading by the defendants’ unilateral decision to use it. Magistrate Judge Stein found this reasoning equally applicable to text messages and held that it would not be equitable to allow “Plaintiffs access to Defendants’ unredacted text messages while simultaneously permitting Plaintiffs to redact their own text messages.” Id. at *6.
Magistrate Judge Stein did, however, order the parties to meet and confer in response to a request from Plaintiffs regarding the possibility of redacting or withholding texts containing “personal or intimate information, competitively sensitive information, political discussions or views, or other embarrassing information.” Id. at *6-7.
In this breach of contract action stemming from a residential construction project, Defendant hired a surveying expert who produced a report accompanied by five .pdf documents consisting of surveys prepared to illustrate his findings. Id. at *1. Defendant’s expert also produced CAD (computer-aided drawing) files at his deposition containing additional measurements that were not shown on the .pdf files.
Plaintiff’s counsel requested that the CAD files be produced in “in some form other than their native file format” because the CAD files in their native form are not “useable” by him without the appropriate software. Id. at *2. Defendant’s counsel refused, saying, “there is no other format in which to produce the CAD files.” Plaintiff then filed a motion to compel Defendant to provide the CAD files in a “reasonably usable form.” Magistrate Judge Sweazea noted that Plaintiff never identified an appropriate alternative format but in his motion indicated that production of the CAD files as .pdf documents would be acceptable, or, in the alternative, he was willing inspect the files at the expert’s “place of work.”
Before turning to the merits of Plaintiff’s motion, Magistrate Judge Sweazea determined that Defendant had satisfied her disclosure obligations under Rule 26(a)(2), which requires a party to disclose “the facts or data considered” by an expert witness, by producing the .pdf files with the relevant survey measurements. Id. at *2-3. He also rejected an argument from the Defendant that Plaintiff’s motion was improper because it was the expert, not Defendant, who produced the CAD files. Id. at *3-5. Magistrate Judge Sweazea found that this argument had some merit, but he declined to deny Plaintiff’s motion on this “technical procedural ground” because Defendant had met and conferred with Plaintiff without raising this objection.
On the merits of Plaintiff’s motion, Magistrate Judge Sweazea explained that Rule 34(b)(1)(C) permits a requesting party to “specify the form or forms in which [ESI] is to be produced,” but in the absence of such a specification, Rule 34(b)(2)(E) allows the producing party to produce ESI in the form “in which it is ordinarily maintained or in a reasonably useable form.” Magistrate Judge Sweazea noted that Plaintiff did not originally specify the form in which ESI was to be produced, so Defendant was authorized to produce it in the form in which it is kept, that is, the CAD files.
Magistrate Judge Sweazea rejected an argument that Defendant had a duty to produce the CAD files in a different form once Plaintiff raised an objection. Id. at 5-6. He explained that because Rule 34 allowed Defendant to produce ESI in its native format, there was no need for Defendant to formally object or take a different approach based on Plaintiff’s request. Plaintiff pointed to the advisory committee notes to the 2006 amendment to Rule 34(b), which states that “the option to produce in a reasonably usable form does not mean that a responding party is free to convert electronically stored information from the form in which it is ordinarily maintained to a different form that makes it more difficult or burdensome for the requesting party to use the information efficiently in the litigation.” Id. at *6. Magistrate Judge Sweazea found that this language applies only where ESI is “converted” to a different format and therefore was inapplicable to Defendant’s production of the CAD files in their native format.
Magistrate Judge Sweazea also rejected an argument that the CAD files were not produced in a “reasonably useable” format for Plaintiff’s counsel because he did not have the software needed to open the files. Id. at *6-7. Magistrate Judge Sweazea explained that the term “reasonably useable format” refers to “the accessibility of the ESI in question.” Accessibility, in turn, “involves two discrete determinations: first, the extent to which the data at issue is actually inaccessible, and second, the apparent reasons for this status.” Magistrate Judge Sweazea noted that Rule 34(a)(1) (A) referred to ESI “that may require translation by the responding party into a reasonably usable form,” which, as explained by the advisory committee notes, may require the responding party “to provide some reasonable amount of technical support, information on application software, or other reasonable assistance to enable the requesting party to use the information.”
Magistrate Judge Sweazea found the advisory committee notes “crucial” because “the issue in this case is whether Defendant should be required to provide Plaintiff with technical support, information on application software, or other reasonable assistance to enable him to use the CAD information.” Id. at *6. Magistrate Judge Sweazea distinguished a prior case involving proprietary software that was unavailable to the requesting party, whereas the “software needed to open CAD files appears to be widely available, as CAD files are common in the construction industry.”
Ultimately, Magistrate Judge found that CAD software is “reasonably available” and that Plaintiff had not detailed what efforts he or his counsel undertook to obtain assistance in accessing and reviewing the native format CAD files. Id. at *7. Accordingly, he held that “[s]o long as the software needed to open the files is commonly available, the files produced in their native form are accessible by Plaintiff and already in a ‘reasonably useable’ form within the meaning of the Federal Rules.” He further rejected Plaintiff’s proposed alternative remedy of ordering Defendant’s expert to “make himself available for an in-person inspection” of the CAD files, finding that Plaintiff had cited to no legal authority supporting this request.
Plaintiff in this trademark infringement lawsuit alleged that Defendants marketed wooden skewers that infringed on its intellectual property. Id. at *1. During discovery, Plaintiff questioned the completeness of Defendants’ document production and the accuracy of Defendants’ answers to Plaintiff’s interrogatories. Defendants amended their interrogatory responses and produced additional documents, but Plaintiffs remained unsatisfied. However, Defendants’ counsel informed Plaintiff’s counsel that “no further responsive documents existed.”
Plaintiff’s counsel later deposed two of the individual Defendants, Ya Lan Yang and Todd Glonek, and asked them about their document searches and retention policies. Id. at *2. Glonek testified that he had his Outlook set up to delete all messages after “either 60 days or 90 days.” Yang testified that she “never deleted any files specifically herself,” but “the computer deleted it automatically so she never designate[d] any document to delete herself.” Yang also testified that the computer “deletes files based on the year” and that she had not searched for several of Plaintiff’s requested search terms.
Plaintiff filed a motion to compel additional documents from Defendants, arguing that Defendants had not produced all the documents responsive to Plaintiff’s discovery requests and that Defendants’ responses to one of Plaintiff’s interrogatories was “materially incomplete.” In its motion, Plaintiff sought an order requiring Defendants “to renew their searches” for responsive documents and requiring each Defendant to “provide an affidavit of compliance describing in detail all efforts that were made to search for and identify responsive documents.”
In response to the motion, Defendants claimed that they had no further documents to produce, nor any additional information to provide in response to the interrogatory, and that Plaintiff had not shown any cause to believe that further responsive documents exist. Defendants also pointed to certain of their written document responses, which stated that Defendants had conducted “a diligent search, and a reasonable inquiry has been made in an effort to comply with this demand but Defendant is unable to comply because documents demanded never existed” or that “Defendant is unable to comply because documents demanded is not presently in possession of Defendant.” Defendants also claimed that the motion to compel was both untimely and procedurally improper due to a failure to meet and confer.
Magistrate Judge Farrish began his analysis by disposing of Defendants’ procedural arguments. He first concluded that Plaintiffs’ communications with Defendants satisfied the purpose of the meet-and-confer requirement and that “additional meeting and conferring would have been futile.” He explained that local rule 37(a) of the District of Connecticut required a party to confer with opposing counsel and discuss the disputed discovery issues between them “in detail in a good faith effort to eliminate or reduce the area of controversy” before filing a motion to compel. But he noted that “the law is clear that a court can excuse a failure to meet and confer if there are exigent circumstances or if a meet and confer clearly would have been futile.” After describing the history of the parties’ discussions regarding the disputed discovery issues, Magistrate Judge Farrish found that it was unlikely either party would have changed its position, and further conferring would have been futile. Id. at *3.
Magistrate Judge Farrish next found that while Plaintiff’s motion was arguably untimely, good cause existed for the untimely filing. He noted that Plaintiff’s motion was filed two days after the close of discovery, requiring Plaintiff to establish good cause for the late filing. Magistrate Judge Farrish explained that “[t]he primary consideration for a finding of ‘good cause’ is the diligence of the moving party,” and he concluded that Plaintiff “was actively engaging in both the discovery and meet and confer processes” throughout the discovery process. Id. at *4.
Turning to the merits of Plaintiff’s motion, Magistrate Judge Farrish explained that courts “often deny motions to compel when the responding party certifies that it has conducted a diligent search and has produced all extant documents responsive to the other party’s requests.” He noted that “a party’s good faith averment that the items sought simply do not exist, or are not in his possession, custody, or control, should resolve the issue of failure of production since one cannot be required to produce the impossible.”
Magistrate Judge Farrish first discussed whether Defendants had made a “good faith averment” of completeness or that documents did not exist. He recognized that Yang had signed certain responses on Defendants’ behalf under penalty of perjury stating that documents responsive to some requests did not exist, but he also noted that neither Glonek nor Yang had testified that no further documents existed to produce.
But Magistrate Judge Farrish found that regardless of whether a “good faith averment” of a complete production had been made, that assertion could be overcome “when the requesting party has a strong reason for disbelieving the claim — in other words, a reason backed up by solid evidence rather than mere suspicion.” Id. at *5. He explained that “suspicions, on their own, do not ordinarily support the entry of discovery orders,” but a different analysis applies when the requesting party “identifies specific evidence to call into question the responding party’s contention that no further responsive documents exist.”
Magistrate Judge Farrish concluded that Plaintiff provided “strong, evidence-backed reasons” for believing that Defendants’ production was incomplete. This included “at least one responsive document” that Plaintiff received from a third party that Defendants failed to produce. This document was a reply to an email (which Defendants did produce) relating to the relevant issue of Defendants’ expectations about or knowledge of the ultimate sale location of the allegedly infringing product. Magistrate Judge Farrish noted that Defendants provided no explanation for their failure to produce it.
Magistrate Judge Farrish also found that Plaintiff demonstrated Yang did not perform a proper search of either her records or Defendants’ records. In her capacity as corporate representative designee, Yang testified that she did not search for several of Plaintiff’s requested search terms relating to certain merchant outlets because she did not have any experience with those merchants. Magistrate Judge Farrish stated that this directly contradicted Defendants’ representation that they had searched “all relevant databases and emails in response to each of” Plaintiffs’ requests, including targeted searches for all requested search terms.
Accordingly, Magistrate Judge Farrish held that Plaintiff presented “specific evidence to call into question” Defendants’ “contention that no further responsive documents exist” and ordered Defendants to conduct additional searches of records and produce all responsive documents.
This putative class action alleging various Employee Retirement Income Security Act violations arose from a consolidation of retirement plans for nonunion employees of several hospitals. Id. at *1. During discovery, a dispute arose as to whether Defendants were entitled to redact “nonresponsive materials from its production,” such as information related “to the business and operation of [Defendants], including confidential financial hospital system administration information”. Id. at *4.
In support of their motion, Plaintiffs argued that redactions other than for privilege are not permissible and that the parties’ confidentiality stipulation and order was sufficient to protect any confidential information in the documents produced by Defendants. In response, Defendants maintained that “redaction of confidential business and financial information” was proper under existing case law.
Magistrate Judge McCarthy began his analysis by addressing the prior decisions relied on by Defendants in support of redaction. He explained that these cases recognize the “general rule” that “courts ordinarily do not permit parties to selectively excise from otherwise discoverable documents those portions that they deem not to be relevant.” Id. (quoting LPD New York, LLC v. Adidas America, Inc., 2020 WL 6784179, *1 (E.D.N.Y. 2020)). He further explained that redactions may be permitted “based upon good cause shown due to the special circumstances of each case and after in camera inspection of the redacted materials.”
Magistrate Judge McCarthy distinguished LPD New York, in which the court found that the defendant had properly redacted the competitively sensitive portions of certain licensing agreements that were not relevant to the issues in the case because the plaintiff’s lawyer had previously disclosed to his client material that had been marked for attorneys’ eyes only. He similarly distinguished Engage Healthcare Communications v. Intellisphere, LLC, 2017 WL 3624262, *3 (D.N.J. 2017), where a special master had found “special circumstances” to permit redactions based on numerous factors, including that the redacted documents contained “highly sensitive and proprietary data” that was not relevant to the case, the principals of the parties (which were direct competitors) were brothers, and the plaintiffs’ counsel had represented the plaintiffs for many years in both litigation and nonlitigation matters. Id. at *5.
Magistrate Judge McCarthy found that Defendants identified no special circumstances like those in the cases it relied on to support its redactions of nonresponsive material. He noted that Plaintiffs are current or former employees of Defendants, not competitors, and that Defendants had not alleged any misconduct or violations of the parties’ confidentiality stipulation and order by Plaintiffs’ counsel. Magistrate Judge McCarthy also found that Defendants had not presented any reason why the protections of the parties’ confidentiality stipulation and order were insufficient.
Magistrate Judge McCarthy held that “it is not for [D]efendants to unilaterally determine what is relevant and to redact purportedly irrelevant information without court permission, because “such redactions breed suspicions and deprive the reader of context.” Rather, “the appropriate course of action should be for the disclosing party to make an application to the court regarding the documents at issue.” Having found that Defendants made no such motion, he granted Plaintiffs’ motion to compel Defendants to serve unredacted copies of the redacted documents marked, subject to appropriate designation under the parties’ confidentiality stipulation and order.
Information on past notable cases and events in e-discovery can be found here.
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