Kay Beer Distrib., Inc. v. Energy Brands, Inc., 2009 WL 1649592 (E.D. Wis. June 10, 2009)
Following the court’s award of partial summary judgment to defendant, the sole cause of action remaining was plaintiff’s claim for breach of an oral agreement. In support of that claim, plaintiff sought to compel the production of five DVDs containing the results of defendant’s search for potentially responsive electronically stored information ("ESI") referencing plaintiff, including emails. Because of the broad nature of defendant’s search, the DVDs contained some information that was privileged or otherwise non-discoverable. Defendant opposed the request as overly broad and unduly burdensome “given the narrow issues remaining in the case.” Moreover, defendant had previously produced responsive ESI, including ESI contained on the DVDs. The court denied plaintiff’s motion to compel. Having denied the motion, the court nonetheless recognized defendant’s obligation to “conduct reasonable searches” to respond to plaintiff’s discovery requests and ordered defendant to conduct additional searching of the ESI at issue as instructed by the court.
Despite defendant’s prior production of responsive ESI, plaintiff sought access to defendant’s DVDs for purposes of verifying production of all responsive information. As the court noted, “[i]n effect, [plaintiff] has demanded every email or ESI in which its name or some variation thereof appears.” Opposing plaintiff’s request, defendant argued that production of the DVDs would be unduly burdensome in light of the need to have its attorneys review the contents “to ensure that only nonprivileged and discoverable information was provided.” The cost of attorney time alone was estimated at almost $120,000.
Considering the nature of the sole remaining claim, the court noted that it was unclear what information on the DVDs would be considered responsive or admissible and stated that “[t]he mere possibility of locating some needle in the haystack of ESI…does not warrant the expense [defendant] would incur in reviewing it.” Turning to plaintiff’s suggestion that the parties avoid the issue of such expense by entering into a clawback agreement, the court reasoned that “[the availability of a remedy for inadvertently produced material…does not deprive a party of their right to withhold it in the first place.” The court went on to note that such an agreement would not relieve defendant of the need to review information it wished to withhold on the ground that such information was not discoverable and contained some proprietary or confidential information that a business in its position may simply prefer not to disclose. Accordingly, plaintiff’s motion for access to the DVDs was denied.
Having denied the motion to compel, however, the court nonetheless recognized defendant’s obligation under the rules of discovery to search for and produce responsive ESI to plaintiff. Noting defendant’s claim that it provided plaintiff with every email referencing “Kay Beer” in the body, the court went on to opine that a “reasonable search” should have included the use of certain variations of plaintiff’s name, including “Kay Distributing” or “Kay.” Accordingly, the court ordered defendant to conduct such a search and to produce any information identified as a result.
Finally, the court addressed plaintiff’s insistence that the information be produced in its native format, “despite the fact the documents could not be Bates stamped in that format, they would be subject to alteration, and it would not be possible to select certain documents and produce only those in that format.” Relying on defendant’s proper objection to plaintiff’s request as unduly burdensome pursuant to Fed. R. Civ. P. 34(b)(2)(D), on the parties’ agreement to produce ESI as either hard copy or an electronic copy “depending on what was most cost effective,” and on defendant’s offer to produce documents in their native format upon plaintiff’s good faith request and demonstration of need, the court determined that such a request was “excessive” under the circumstances.