Electronic Discovery Law
Party that Sought Metadata Only After Production of Document in .PDF and Paper Formats Not Entitled to Native Production
Autotech Techs. Ltd. P’ship v. Automationdirect.com, Inc., 248 F.R.D. 556 (N.D. Ill. 2008)
In this trademark infringement litigation, defendant sought to compel Autotech to produce an electronic copy of a word processing document entitled “EZTouch File Structure.” Autotech had already produced the document in both .PDF format on a compact disc and paper format, and had also provided a “Document Modification History” representing a chronological list of all changes made since the “EZTouch File Structure” document was created. Defendant argued that the production was not acceptable, because the document existed in its “native format” on a computer at Autotech's offices in Bettendorf, Iowa. Defendant wanted the “metadata” -- information it claimed was within the electronic version of the document including when the document was created, when it was modified, and when it was designated “confidential.”
The court considered whether either the .pdf file and the hard copy were reasonably usable forms under Fed. R. Civ. P. 34(b)(2)(E). Defendant argued that the production was not usable because it did not contain things that metadata would contain, like the history of the document. However, the court noted that the paper copy included a nine-page history of the changes made to the document from its creation on February 9, 2000, to March 2, 2007.
In addition, the court pointed out that defendant had not specified that it wanted metadata to be produced, and that there was no mention of metadata in earlier motions to compel. It continued:
It seems a little late to ask for metadata after documents responsive to a request have been produced in both paper and electronic format. Ordinarily, courts will not compel the production of metadata when a party did not make that a part of its request.
The court then noted that some courts faced with the issue regarding the production of metadata have looked for guidance from the The Sedona Principles: Best Practices, Recommendations & Principles for Addressing Electronic Document Discovery (The Sedona Conference Working Group Series, July 2005 Version). The court quoted a comment which it found of particular interest which addressed a hypothetical situation where a party requesting production did not specify a format:
The producing party assembles copies of the relevant hard copy memoranda, prints out copies of relevant e-mails and electronic memoranda, and produces them in a PDF or TIF format that does not include metadata. Absent a special request for metadata (or any reasonable basis to conclude the metadata was relevant to the claims and defenses in the litigation), and a prior order of the court based on a showing of need, this production of documents complies with the ordinary meaning of Rule 34.
(Citing Williams v. Sprint/United Management Co., 230 F.R.D. 640, 643 (D. Kan. 2005) quoting The Sedona Principles, Comment 9a); Pace v. International Mill Service, Inc., 2007 WL 1385385, *2 (N.D. Ind. May 7, 2007) (same).)
The court further noted that, in a later comment, the conference stated that “[a]lthough there are exceptions to every rule, especially in an evolving area of the law, there should be a modest legal presumption in most cases that the producing party need not take special efforts to preserve or produce metadata.” (Citation omitted.)
Accordingly, the court denied defendant’s request for production in native format: “There was no request for metadata here until recently – after production. ADC was the master of its production requests; it must be satisfied with what it asked for.”
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