U.S. District Judge James Browning is a fine fellow.  There are many reasons to say so; but the first is that, though he sits in New Mexico, he was born in the Great State of Texas.  Judge Browning kindly spoke to my E-Discovery class at the law school in September 2012.  I’d sought him out because he’d been ably grappling with e-discovery issues in a case styled S2 v. Micron.  In his remarks to my class, he splendidly recounted some of the challenges faced by judges who ascended to the bench before the Age of Digital Evidence.  Judge Browning has one of those C.V.s that could make any lawyer hate him (e.g., Yale, varsity letterman, Law Review editor-in-chief, Coif, Supreme Court clerk); but he’s a good judge and a nice guy to boot.

I share my admiration of Judge Browning to underscore that I feel a bit of a rat in expressing misgivings about his recent opinion in The Anderson Living Trust v. WPX Energy Production, LLC, No. CIV 12-0040 JB/LFG. (D. New Mexico March 6, 2014).  I think he got it wrong in some respects–not on the peculiar equities of the case before him, but in his broader analysis of Rule 34 of the Federal Rules of Civil Procedure and in conjuring a Hobson’s choice for requesting parties. 

The Anderson Living Trust case is a fight over gas leases; but the merits don’t matter.  As the Court succinctly put it, the issue, is “whether the Defendants must arrange and label approximately 20,000 pages of documents stored in hard copy form which, at the Plaintiffs’ request, were scanned and produced as searchable PDF files….”

The Defendants planned to unilaterally convert the paper into TIFF images with OCR load files, but acceded to Plaintiffs’ request that they supply searchable PDFs instead. So, the Defendants converted paper records to TIFFs and then to searchable PDF images.  Remember, at the start of the litigation, the source evidence items were paper records, not electronically stored information (ESI).  Litigation alone prompted their conversion to crudely-searchable electronic formats.

In stark contrast to ESI, paper documents are inherently unsearchable.  Thus, paper records are that rare form of evidence that is enhanced, rather than degraded, by conversion to page images and by use of optical character recognition (OCR) to approximate searchable text.  As it happens, TIFF images cannot carry the text, but PDF images can.  Think pants with pockets versus skirts without pockets.  When you use TIFF images for production, text has to go somewhere and, since TIFFs have no “pockets,” the text goes into a purse called a “load file.”  Load files are meant to be loaded into a database called a review tool where, paired with corresponding page images, non-searchable hard-copy documents acquire a rudimentary searchability.

Because the searchable text was derived by OCR (as opposed to text extracted from an electronic source), PDF wouldn’t outshine TIFF in terms of the accuracy of text searchability.  Both would be equally rife with errors, but both still better than paper.  Accordingly, the principal distinctions between the two image formats go to convenience—you can search text in a PDF without messing with load files, and PDFs are more compact than TIFFs despite holding both page images and text.

The Plaintiffs’ request for PDFs suggests they were seeking a form of production they could manage without review tools; but, considering the source was paper and OCR, they gained little by demanding PDF and, as it turned out, ceded quite a bit.

When Plaintiffs received the PDF production, they concluded they were unable to manage it unless the Defendants either organized the documents as they’d been kept in the usual course of business or indicated which items produced were responsive to which Request.

The defense furnished an index of their production but declined to do more, contending that, because the paper documents were now deemed ESI, the Plaintiffs could no longer secure the benefits of rules governing production of “documents.”

The dispute thus turned on how to apply Fed. R. Civ. P. Rule 34(b)(2)(E), which provides:

Producing the Documents or Electronically Stored Information. Unless otherwise stipulated or ordered by the court, these procedures apply to producing documents or electronically stored information:

(i) A party must produce documents as they are kept in the usual course of business or must organize and label them to correspond to the categories in the request;

(ii) If a request does not specify a form for producing electronically stored information, a party must produce it in a form or forms in which it is ordinarily maintained or in a reasonably usable form or forms; and

(iii) A party need not produce the same electronically stored information in more than one form.

The Defendants made a compelling case, insisting they had: (i) produced the documents “as they are kept in the usual course of business”; (ii) “provided information about the particular way in which the documents are ordinarily maintained”; (iii) “provided an index identifying documents by category”; and (iv) “produced the documents so that they are fully searchable.”  The Defendants added the coups de grâce that organizing the production to correlate with the discovery would be a lot of effort that was unlikely to benefit anyone.  They well played the proportionality card (although the word “proportionality” appears nowhere in the opinion).

Still, the Court agreed with the Plaintiffs and directed the Defendants to label their responsive documents to correspond to the Plaintiffs’ requests.  The ruling was a model of stare decisis, considering the Court cited three prior opinions in which it had reached a similar result ordering a party to tie Bates numbers to specific Requests.

The Court reflected on its reasoning as enunciated from the bench:

The Court said that it understood rule 34(b)(2)(E)(i) — requiring a responding party to produce documents “as they are kept in the usual course of business or . . . organize and label them to correspond to the categories in the request” — to apply both to hard copy documents and to ESI, as both are subsets of the catchall term “documents,” and that rule 34(b)(2)(E)(ii) and (iii) are additional provisions related only to the production of ESI. … The Court expressed uncertainty regarding how a party would produce ESI “in the usual course of business,” and that, if the party were to go through the documents and remove privileged or unresponsive documents before placing the files on a storage device, this production would not meet the “usual course of business” requirement and the party would have to label the documents to correspond to the categories in the request. … The Court compared hard copy document storage to ESI and noted that it would be difficult to find an analog to allowing opposing counsel access to boxes of information kept in warehouses, because it would require the responding party to give the other party access to the responding party’s computer system, or to place all of the files on a storage device without culling out any unresponsive or privileged files….

The Court, it appears, was less than supremely confident in its ruling.  Understandably, as these were not your usual, imperious “Let them eat TIFF” Defendants.  They approached the Plaintiffs and inquired about preferred forms of production.  They supplied native files in native forms and paired same to particular requests.  They promised that the paper documents were ordered as in the usual course, notwithstanding their digitized format.  They graciously added searchability to unsearchable paper documents and furnished an index.

I’ve seen worse…much worse.

A month later, the Court held a hearing on an unrelated matter and the defense asked the Court to reconsider its directive to pair the Bates numbers of the electrified paper with the requests to which they are responsive.  It’s not clear from the opinion why the work hadn’t been done in the intervening month, and I expect Plaintiffs’ counsel couldn’t have passed a BB when the Court said it “was seriously rethinking its prior ruling” and that “some of the commentators and some of the cases conflate.”

I hope it wasn’t some blindsided young associate who had to comment and conflate all that back to the partners.  [Have you seen Breaking Bad?  They don’t mess around in Albuquerque].

The Court made it easy for the defense, stating that, if the Defendants could prove that the ESI was produced as it was kept in the usual course of business, without litigation-related alteration, then the Court was inclined to rule that no labeling would be required.  But the Court added, “once you’ve set there and you had your paralegals go through it, you’ve decided that this is relevant, this is not relevant, we’re going to go through it for privilege, we’re going to Bates stamp it, I don’t think that’s . . . the usual course of business.”

Undaunted, the defense provided a declaration, and a damn fine one, too!  The Declaration establishes that the only documents removed from production were privileged ones, and supplies a breakdown of contents by Bates number ranges and sources.  The affidavit also confirms my suspicion that the venerable Plaintiffs’ firm was trying to navigate e-discovery in an “old school” way, without benefit of basic e-discovery tools.

The Plaintiffs supplied no counter-declaration from anyone with any e-discovery expertise (or from anyone at all, insofar as PACER reveals).

Reminder: Evidence is good.  Judges like evidence more than lawyer talk.

At this juncture, the Court could have put this matter to bed in three ways, without muss, fuss or dicta:

1. The Court could have found that the material in question derived from hard-copy documents clearly subject to 34(b)(2)(E)(i) at the start of litigation, and the conversion of these paper documents to searchable electronic forms for use by counsel in discovery didn’t change their essential character for purposes of requiring that they be organized as they are kept in the usual course of business or organized and labeled to correspond to the categories of a request.  Plaintiff prevails.
2. The Court could have found that the electronic counterparts of the paper documents had been produced in substantially the way they were kept in the usual course of business, making reasonable allowances for variations attendant to the parties’ agreement to scan and OCR the material and the need to protect privileged content.  Documents withheld as privileged would necessarily be identified in a privilege log by Bates number, so, their location within the collection could be readily established.  Defendant prevails.

3. The Court could have found (and did find) that the Parties agreement respecting production was a stipulation that altogether removed the issue from the purview of Rule 34(b)(2)(E), and the Court could have fashioned any outcome it deemed proper and proportionate without further need to address the (inapplicable) Rule 34(b)(20(E) in dicta.

Instead, the Court pursued a broad-ranging assessment of Rule 34(b)(2)(E) that stirs an eddy of uncertainty.

1. For example, the Court termed “unavailing” the argument that the source documents weren’t ESI because they existed in hard copy form and were only imaged for production.  The Court reasoned that the agreement to image the documents was, in fact, the parties stipulating out of the rule’s default provisions.

This makes little sense.  Certainly, parties can agree to stipulate around Rule 34(b)(2)(E); but such a stipulation should be clear and express.  It needn’t follow that because one party accedes to another party’s desire to make paper records more convenient, organization of the information is optional.  Why should a mutually beneficial endeavor come at the risk that an opponent is free to destroy the usual and customary organization of the evidence or at the cost of a requesting party’s right to know what’s responsive to what?

The parties merely settled upon forms of production.  They made no bargain respecting the organization of production, nor did they agree to restrict the scope of production.  These are three distinct dimensions of discoverable information.

It was the producing party’s avowed intention to convert the hard-copy documents to TIFF images.  Had they done so without the agreement of the requesting party, they would nonetheless have been obliged to produce the hard-copy documents as kept in the usual course or organized and labeled to correspond to the request.  Judge Browning made quite clear that, “’if at the beginning of the litigation the documents existed in document hard copy form,’ then the Defendant could not unilaterally convert the documents into ESI.”  However, if the requesting party cooperates and allows a producing party to convert hard-copy documents to TIFF or PDF, the requesting party is now agreeing, sub silentio, to forego organization of the documents.  The producing party is thus free to make an unholy mess of the production from an organizational standpoint, and there’s not a thing the requesting party can do about it.  That doesn’t add up.

2. At the start of the litigation, the 20,000 pages produced were paper records kept in the usual course of the Defendants’ business.  From the standpoint of the usual course of the Defendants’ business, they never changed form.  That is, they did not become ESI in conjunction with the customary operation or recordkeeping of the Defendants’ business.  So, they remained subject to the provisions of Rule 34(b)(2)(E)(i).  It’s a mistake to equate conversion for the convenience of the lawyers to conversion in the usual course of the litigants’ business.

 If a lawyer elects to convert ESI to another form like scanned images, the destination form may be the form used in the course of the lawyer’s business, but it’s not the form used by the producing party

 The Court fails to distinguish between the form and organization of information as used by the parties to an action and the (de)form and (dis)organization occasioned by counsel’s wish to convert information to something else.  We frequently encounter this assumption in e-discovery.  That is, producing parties assume that requesting parties can’t demand any form more complete or utile than the dumbed-down versions used by producing party’s counsel.

That’s not the rule.

Requesting parties should be entitled to obtain forms of production that mirror the forms the producing parties use, not compelled to accept the degraded forms preferred by the producing party’s lawyer.

3. The form of production does not implicate the organization of production. They are different, and each presents different opportunities for abuse.  A party can produce information items in utile, complete and searchable forms but still disrupt organization or logical unitization (i.e., folder structure) so as to render the production all but useless.  The notion that electronic search adequately offsets the risk of shuffling and other organizational mischief is untenable—ask anyone who’s ever gotten a malformed load file.

Organizational information, like foldering data and file locations (paths), are as essential to utile production today as they were in the paper era, if not more so.

4. I don’t share the Court’s view that potentially responsive documents/ESI collected as maintained in the usual course of business lose that character when privileged documents are culled.  Granted, the collection is not as complete as kept in the usual course, but the remaining documents are still organized and in the same form as kept in the usual course.  In the paper era, it was customary for the boxes from the legal department to be spirited out of the warehouse; and when privileged contents turned up, they, too, were pulled.  Production by inspection didn’t oblige a producing party to abandon privilege.  Parties need not do so with respect to ESI.

5. Most problematic of all is the Court’s conclusion that provisions 34(b)(2)(E)(i) and 34(b)(2)(E)(ii) “apply to distinct, mutually exclusive categories of discoverable information,” being “Documents,” which the Court calls “a term that does not include ESI,” governed exclusively by 34(b)(2)(E)(i), and ESI, which the Court says is governed exclusively by 34(c)(E)(ii).  The Court relies on the views of a distinguished commentator, John K. Rabiej.  With respect to Professor Rabiej–who was closely involved with the amendments process—his disjunctive interpretation of 34(b)(2)(E) is one thoughtful view; but one that seems oddly out of step with the Committee Notes.

The Court’s embrace of such a distinction is regrettable because the 2006 Federal Rules amendments and the Committee Notes that accompany them go to some pains to underscore that the term “documents” includes ESI.  In fact, defining “Documents” to encompass data compilations has a long and uncontentious history in the Rules.

The Court saw the perils, stating, “There is something to be gained from imposing basic organization requirements onto massive productions of ESI; artifacts of ESI can be jumbled beyond usefulness — by dumping them out of their file directories and onto the requesting party — just as easily as hard copy documents can.”  Indeed, and it happens all the time, though more often as a consequence of carelessness than of bad faith.

The organization of ESI in production can fairly and efficiently be made to mirror its organization in the usual course of business.  It typically requires little more than competent handling of system metadata.  It doesn’t require granting an opponent access to a responding party’s computer systems.

Here again, it’s useful to distinguish the three dimensions of discoverable ESI: form, organization and scope.  If a party culls privileged content before producing the data for inspection, form and organization remain the same; only scope changes—and it’s appropriate that privileged content be outside the general scope of discovery.  Any minimal impact on organization is offset by the obligation to log content withheld as privileged.

6. Finally, it’s an ill wind which blows no man to good.  Judge Browning clarified that his ruling did not apply unless the requesting party sought conversion to an imaged format.  “’[I]f at the beginning of the litigation the documents existed in document hard copy form,’ then the Defendant could not unilaterally convert the documents into ESI.”

By that reasoning, if at the beginning of the litigation the documents existed as ESI, the producing party cannot unilaterally convert the documents into paper or paper-like forms (e.g., images) unless the requesting party stipulates to same.

Quoting Professor Rabiej, the Court notes that “while (E)(i) document production gives the producing party the right to choose whether to produce ‘in the usual course of business” or “label[ed] … to correspond to the categories in the request,’ (E)(ii) puts the ball in the requesting party’s court by first giving them the option to ‘specify a form for producing’ ESI. Fed. R. Civ. P. 34(b)(2)(E)(i)-(ii). It is only if the requesting party declines to specify a form that the producing party is offered a choice between producing in the form ‘in which it is ordinary maintained’ — native format — or ‘in a reasonably useful form or forms.’ Fed. R. Civ. P. 34(b)(2)(E)(i)-(ii).”

That’s powerful stuff, and dead right.  Producing parties have long assumed that they were free to ignore a requesting party’s specification of form so long as they produced in a form claimed to be “reasonably usable.”  Not so.  As the Court notes, the “reasonably usable” option applies only when a requesting party fails to specify a form.

The lesson for requesting parties is ALWAYS, ALWAYS, ALWAYS specify forms for production in your requests.  If you want Word documents produced natively, SAY SO!  If you want e-mail in functional forms, specify the forms!  The Rules afford requesting parties the crucial right to specify form or forms of production, and lawyers who fail to avail themselves of that right are inviting production of less utile and -complete forms.  If you wear a “KICK ME” sign on your bootie, don’t be surprised by the boot.

So, with apologies to Judge Browning, the result seems right, but the rationale not so much.  It’s dicta likely to be cited in support of mischief, and I know that’s not what the Court wished.

And just in case anyone wonders, I have nothing whatsoever to do with any of the parties or counsel in the case (though I authored a book chapter on jury selection in a collection edited by plaintiffs’ counsel, Turner Branch, about thirty years ago, and like defense discovery counsel, I am a member of the Sedona Conference Working Group 1).