Software Licensing Restrictions No Shield Against Production

Pero v. Norfolk S. Ry., Co., No. 3:14-CV-16-PLR-CCS, 2014 WL 6772619 (E.D. Tenn. Dec. 1, 2014)

In this case, the court declined to require the plaintiff to view the at-issue video at Defendant’s counsel’s office or to obtain a license for the proprietary viewing software and ordered the defendant to either produce a laptop with the video loaded on it for Plaintiff’s use in the litigation or to reimburse the plaintiff for the cost of a software license.

Plaintiff, a train conductor who was allegedly injured while attempting to remove a tree that was blocking the railroad tracks, sought to compel Defendant’s production of relevant video.  Defendant stated that it “merely own[ed] a license to use the software” necessary to view the video and that providing a copy to Plaintiff would exceed the license’s scope. Instead, Defendant offered to allow Plaintiff’s counsel to view the video at Defendant’s counsel’s office or suggested that Plaintiff pay $500 to obtain his own software license.  Plaintiff moved to compel the production of a copy of the video; Defendant moved for a protective order.

Taking up the dispute, the court turned to Fed. R. Civ. P. 34, which indicates that electronically stored information is discoverable and that if the requesting party does not specify the format of production, the responding party must produce the information “in a form or forms in which it is ordinarily maintained or in a reasonably usable form or forms.” The court also highlighted a particularly pertinent portion of the rule’s 2006 Comments: “Under some circumstances, the responding party may need 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.”  Turning next to relevant case law, the court discussed the outcomes in analogous cases in which the responding party was ordered to provide the information sought.

In the present case, the court found “that the Defendant’s arguments against producing the recording [were] not well-taken,” reasoning that “Rule 34 clearly envisions that the responding party will bear reasonable burdens in producing discoverable materials in its possession.”  The court went on to reason:

Police 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 insolate against production.  As noted by the court in Swoope, the Defendant certainly envisioned the recordings produced by RailView being used in litigation or other claims against it.  It cannot use its choice to enter into a software agreement as a shield against producing a relevant piece of discovery, nor can it use the agreement as a basis for attaching burdensome conditions to the production of the recording.

Accordingly, the court ordered the defendant to either “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 “request that the Plaintiff procure a software license and . . . then reimburse Plaintiff for the costs of that license, within thirty (30) days of its procurement.”

A full copy of the court’s order is available here.

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