#CaseoftheWeek Episode 65: Search Terms to Include in an ESI Protocol

#CaseoftheWeek episode 65 is an analysis of Raine Grp. LLC v. Reign Capital, LLC. In this episode, Kelly Twigger discusses what is appropriate to include in an ESI protocol on search and what you will want to bring to the Court in asking for a ruling on what search terms should be applied to ESI.

This decision comes United States Magistrate Judge Katharine H. Parker from February 22, 2022.

Good morning, and welcome to episode 65 of our Case of the Week series, published in cooperation and partnership with ACEDS. My name is Kelly Twigger; I am the CEO and founder of eDiscovery Assistant and the Principal at ESI Attorneys. Thanks so much for joining me today.

Each week, as you know, on our Case of the Week series, we choose a decision from our eDiscovery database and really try to pick things that highlight key issues for litigators and folks involved in the eDiscovery process and talk about the practical implications of that decision and what it really brings out as key points for us to consider in our everyday practice.

Today’s case is from Raine Group, LLC vs. Reign Capital, LLC, and you can tell from the name already that we’ve got a trademark infringement and unfair competition case based on the defendant’s use of the name Reign Capital. Raine Group, which is the plaintiff, is spelled R-A-I-N-E. Reign Capital, which is the defendant, is spelled R-E-I-G-N.

This is a decision from just a couple of months ago, February 22nd, 2022. This is a decision authored by Magistrate Judge Katharine Parker out of the Southern District of New York. If you’re regular on our Case of the Week series, you know that we routinely cover Judge Parker’s decisions because she is an extremely thoughtful jurist on these issues. Judge Parker has 53 separate written decisions on eDiscovery in the eDiscovery Assistant database. She’s quite prolific and well educated on these issues, and it’s always a pleasure to cover her decisions.

You’ll recall that Judge Parker was the author of the Noon cases, which have been discussed in great detail over the last year. We covered them at the UF Law E-Discovery Conference. That was the case that discussed whether or not hyperlinks in an email were considered attachments for the purpose of production, really in the context of Gmail and Teams data, which now use links to documents instead of attaching the physical document to the email. It’s again, great to see Judge Parker’s analysis. I’m going to share with you a lot of her language from this decision today because I think it’s important as it pertains to what is appropriate for inclusion in an ESI protocol.

This, as I mentioned, is a case on trademark infringement and unfair competition based on the defendant’s use of the name Reign Capital. The plaintiff here is a 100-person bank, so 100 employees at the plaintiff. The defendant is a two-person real estate development firm. Again, plaintiff is suing the defendant for infringement based on the name of the defendant’s firm.

The parties are before the Court on a dispute related to language in the ESI protocol that covers really three different issues. One is the language regarding the party’s search obligations in general. Two is regarding certain specific search terms and whether or not modifiers should be applied to those terms. The third is what custodians are to be searched for each party.

Before we kind of dive a little bit further into the facts as we’re talking about this, I want you to really think about whether the kind of language that’s proposed here is what you would want to include in your protocol to begin with. As you can see in our ESI Protocol Blog Series, that series breaks down each of the elements that you’ll want to include in your ESI protocol and all of the individual issues on each of those elements.

One of those elements is search terms. Rarely do we agree on how many custodians will be searched at the time, although it is often the point that sometimes we’ll talk about the process of parties agreeing to exchange a list of custodians to be searched, but not necessarily agreeing upon a number. The reason for that is that the discovery process is continuously iterative. When you agree to details like specific search terms or specific modifiers or the process for searching in terms of actual sources of ESI that you’re going to search, when you get into that level of detail, you’re really limiting what the party’s obligations are. We’re going to see how the Court addresses that. It’s really a great decision from Judge Parker on that issue.

This does appear to me to be a case where there was a lack of cooperation. Now, whether the lack of cooperation was due to a lack of sophistication or understanding of things or a failure to dive into the data and actually understand what was there in order to make appropriate arguments, I’m not really sure because that’s not dictated. But it’s pretty clear that it was one or both of those things.

In terms of the actual dispute, the defendant proposed the following three paragraphs to be included in the protocol.

Paragraph one:

“The parties also acknowledge that apart from this ESI protocol, each party has an independent obligation to conduct a reasonable search in all company files and to produce non privileged and responsive documents to pending document requests. Nothing in this ESI protocol relieves either party of the protocol of its obligations to produce information, and this protocol is an aide to locate responsive documents, not a replacement.”

Second paragraph:

“Defendant does not agree that plaintiffs search for responsive electronic documents should be limited to the foregoing individuals (six identified custodians. The defendant wants the plaintiff to have all of its employees search for responsive documents and insists that its obligation is to search all its files for potentially relevant information to this litigation, as defendant agrees to do.”

Then the third paragraph that defendant wanted to add is:

“Defendant maintains that both parties have an independent obligation to search all files from all employees that could reasonably contain responsive documents to the party’s document search requests.”

Just listening to that language, you can see that

1. It’s over broad
2. It really is consistent with or is just restating the party’s general obligations under the Federal Rules of Civil Procedure.
3. [It] is very defendant leaning. It’s trying to essentially put in an ESI protocol that’s going to be signed off on the Court, that the plaintiff will search all 100 people and all sources of information, and that is over broad

There are also disputes on specific search terms. Now, Doug’s article from eDiscovery Today does a really good job of doing the analysis on when modifiers are appropriate in that. I’m not going to re-cover that with you today.

What I am going to cover is that it feels like that there was not a lot of digging into the data to determine what search terms really would have been relevant to be able to resolve this kind of issue. Iit feels like the parties were trying to come up with search terms that would be super broad to encompass all of the requests for production in this case, instead of trying to come up with search terms that would be responsive to each individual request for production. This is what I advocate, what really makes the most sense from a perspective of making sure you’ve got all responsive materials. It’s something that the Court addresses, but you’re going to see that the Court’s ruling says, “look, guys, I can only do what you put in front of me. It’s not my job to go through this data.”

The only information we have about the parties working with the data to be able to provide information on these search terms is that they ran at least one hit report that the plaintiff thought made an over broad search request, and so therefore, asked for a modifier associated with it. There’s not a lot of other information about what the parties were looking at on search terms to be able to help the Court understand what would be appropriate. What we have is we’re before the Court on a search term dispute without a lot of information to help the Court determine what would really be appropriate search terms here.

The other issue is the custodian issue, right? I mean, I’ve already mentioned this. The plaintiffs identified six custodians that were likely to have relevant information after their investigation. The defendants wanted all 100 employees of the bank to have their data searched.

Now we know right out of the gate that asking for 100 custodians indicates between these two parties is going to be tremendously over broad. We rarely see 100 custodians, except for perhaps in the largest of class actions associated with design and development of products or drugs that would implicate multiple departments and have a need for such a large number of custodians. In this type of case, that is going to be a very unusual request and one that we’re going to see the Court does not grant.

All right, what’s the Court’s analysis here? Well, the Court starts with an analysis of the party’s obligations under the Federal Rules of Civil Procedure, and this is where Judge Parker really lays out some great case law that I would encourage you to take a look at. This is a really short opinion; one that will take you just a few minutes to get through. You’re going to want to highlight and keep it as part of key cases related to ESI protocols.

Judge Parker starts out by talking about Federal Rules of Civil Procedure 26 and Rule 34. Both require the parties to conduct a reasonable search for documents that are relevant to their claims and defenses, and that under Rule 26(a)(1), the parties have an affirmative obligation to search for documents that they may use to support their claims and defenses unless the use would solely be for impeachment.

Rule 26(a) also requires a party to provide such copies of documents or identify them by category and location without waiting for a discovery request, and the Court cites to the committee notes from Rule 26 to, “The duty to make a reasonable inquiry is satisfied if the investigation undertaken by the attorney and the conclusions drawn therefrom are reasonable under the circumstances. It is an objective standard similar to the one imposed by Rule 11. Ultimately, what is reasonable is a matter for the Court to decide on the totality of the circumstances.” That’s really the lay of the land.

The Court also then cites to Rule 26(g) (which we’ve talked about multiple times on the Case of the Week) that requires that the responses to the documents be signed, certifying by the attorney that the disclosures made are complete and correct, as at the time of the disclosure after a reasonable search. The Court really says, “based on these rules, we already know what your obligations are. We don’t need additional language in the ESI Protocol between these parties to codify that language, and nothing should be increasing the breadth of those obligations as they’re defined by the Federal Rules of Civil Procedure.”

The Court really looks at addressing the party’s obligations under those rules and says that there’s nothing in those rules that says that the producing party must search custodians and locations that it identifies on its own as sources for relevant information as part of its obligations under Rule 26 and 34. Essentially, we’re noting that we already have those obligations, so we don’t have to reiterate them for purposes of the ESI Protocol.

The Court notes that parties—in addition to their obligations under the Federal Rules of Civil Procedure— should also cooperate with the other side to the extent that the other side believes there should be additional search terms, custodians, or locations that may have appropriate information, that cooperation should happen, and that it is also within the party’s obligations under the Federal Rules.

One of the key quotes from the Court on really the need for and basis for and role of the ESI Protocol is key here, and that reads as follows:

An ESI protocol and search terms work in tandem with the party’s obligations under the Federal Rules and do not replace a party’s independent obligation to produce electronic or paper documents that are reasonably accessible, relevant, and responsive within the meaning of Rule 34.

Essentially what we’re saying here is that you’ve got obligations under Rule 26 and Rule 34, those obligations mean you’ve got to conduct your own search. It’s not up to the defendant here to provide search terms for the plaintiff to go and look at. The plaintiff has an independent obligation to provide that information. If the other side proposes search terms, it is also incumbent upon the producing party to take those search terms into account and negotiate or cooperate with the other side after looking at data as to whether or not the search terms are appropriate or how they can be modified to provide appropriate responsive documents as the party’s obligations entitled them to.

The Court goes on here to talk about that the proposed language from the defendants was really unnecessary, given the discovery rules that require each party to sign its disclosures and certify that they’ve conducted a reasonable search. The Court noted that to the extent that the language proposed by the defendants here suggests that a party have to search all the company files or all files from all employees, that language is over broad, and that’s really going to be one of our key takeaways here, so focus on that.

The Court found that counsel for both the parties should consult with their respective clients to understand which custodians and locations are likely to have relevant information and whether or not that information will be responsive to document requests.

Again, it really feels like we’re trying to argue big picture here without getting down to the nitty gritty details and we’ll talk about that in the takeaways.

After the parties engage with their clients, the Court states that the parties can then determine the contours of a reasonable search, which may mean eliminating custodians or locations that may have redundant information, be inaccessible, or have any date related filters that could be called based on the allegations of the complaint.

One of the big factors in the Court’s analysis here is really the disparity between the parties. The Court notes:

When a party is a single person or a closely held company with a handful of employees, the custodians and sources of information may be obvious and there may not be redundancies in the sources of information, but when a party is a large entity (like the plaintiff here), it is more likely that there will be redundancies in the sources of ESI and custodians or locations where information is likely to be stored.

Meaning that the more employees you have, the more likely multiple people are going to be copied on emails. For example, if there are five people on an email, grabbing that email from one custodian versus all five is going to be sufficient for purposes of providing that information, unless one of the other five uses another subsequent string that would be relevant, which you’ll be able to determine once you start looking at that information and determining scope.

Again, it’s really about looking at the data. You’ve got to dig into the data and really understand it in order to be able to negotiate effectively, and that comes before you do an ESI protocol. You really need to be looking at your data before you’re engaging with the ESI protocol.

Now, based on that disparity between the parties here, the Court basically says you can’t just blanket say that a company with 100 employees should look at all hundred custodians. That’s over broad.

We talked a little bit about the party’s responsibilities in discovery and the language that was proposed there. We talked a little bit about the custodians.

Let’s talk now about the search terms. The parties here disagree on the search terms and Judge Parker goes into the law and really talks about the fact that the Court has, “broad discretion to manage the discovery process, including determinations regarding which search terms of parties should apply.” She also says, and this is perhaps the most important part of today, “search terms, while helpful, must be carefully crafted.”

I’ll tell you, from looking at the search terms here that the parties are discussing, they were not carefully crafted in this case. It doesn’t look like there was much review of data in analyzing these search terms.

Again, just one hit report run and that’s it. There’s really very little information before the Court on these search terms. There’s the search term and then some proposed modifiers in order to narrow those search terms And that’s it.

As the Court notes, poorly crafted terms can return thousands of irrelevant documents and increase the burden of locating relevant and responsive ESI. It can also mean that parties can miss documents containing a word that has the same meaning or that’s misspelled if you’re not looking at the data. Again, you’ve got to look at the data to determine search terms. Just making them up based on what it is you think you might know about the case is not going to get you the relevant, responsive information that you want.

The Court also notes that broad general search terms, such as the ones the parties are using here, are typically not sufficiently targeted to find relevant documents. Modifiers are often needed to hone in on truly relevant documents. However, what is appropriate in terms of a modifier is left to specialists who can interpret, hit reports or look at the data and suggest refinements. That is not an area for the Court to do. However, because here the parties can’t agree, it’s left to the Court to do that with a very little information that is before it.

The Court then spends some time going through each one of the search terms and the modifiers associated with them and make some orders based on what it will require the parties to accept based on a modifier. Even with the modifiers, it seems unlikely to me that you’re going to get a lot of relevant documents for these search terms because they’re just not well crafted.

In terms of how the Court comes out, essentially, the Court looks at each of the individual search terms, decides whether or not the modifier should be accepted, and rules on each of those, and then orders the parties to submit a revised ESI protocol based on the Court’s rulings. What we’ve essentially found here is that the parties have lost the ability to continue to iterate on search terms because they’re asking for these specific search terms and modifiers to be a part of the ESI protocol. In order to go outside of that protocol and ask for additional terms, they’re going to have to modify that order.

Instead, what I would propose to you is a better way to deal with search terms, would be to iterate on the search terms back and forth based on the individual requests for production. Now, that does not mean that the producing party’s obligations aren’t broader than those individual requests for production, but it does mean that you would have search terms that would be tailored to each of those requests, and they’re going to be very different than what the search terms are that are proposed here in this case.

They’re going to be more narrowly focused; they’re going to be actually based on a review of the data, and they’re going to be more effective for both sides. They’re going to mean that the producing party doesn’t have to spend as much time and money of producing documents, and they’re going to mean that the requesting party actually gets the information that is appropriate for them.

Okay, that’s one of our takeaways on the case. What are the other takeaways?

Well, if you’ve had too many conversations with me or you’ve attended any of the sessions that I’ve held, whether it’s at UF Law E-Discovery Conference or at other conferences over the years, you know that I’m a huge proponent of ESI protocols, but that the scope of the protocol needs to be specific enough to elucidate what the parties are going to engage in and how information is going to be provided, but also broad enough that you’re not putting anybody in a box because you need to be able to iterate on the discovery process.

We can have 100 requests for production, and two of them can be specifically about a particular database, and the information about that particular database is something that is unlikely to be addressed in an ESI protocol. You just don’t want that level of specificity in an ESI protocol. That’s an order that you subsequently have to go to the Court to modify. You want to have that cooperation, that discussion with the other side about these individual data sources without having to codify that in the ESI protocol.

Next takeaway, when you submit issues on search terms to the Court, you need to provide a lot more information than what is available to the Court here. I don’t feel like taking away even what the Court ordered here is really going to help the parties get to the information that they need for purposes of discovery here. You’ve got to think about is what we’re doing really going to benefit us both from a perspective of defending it on a motion, but also, are we going to get what we want if the Court grants the other side’s proposal.

You got to provide more information than just one hit report here and again, get into the data, dig into the data, and actually find search terms that are going to be relevant here. You could have had more iterations on discovery to go back and forth, and that would be what’s more appropriate rather than codifying the broad language and these individual search terms in an ESI protocol.

Next takeaway is really to lose the language that’s reiterating what the party’s obligations are under the Federal Rules of Civil Procedure or the state equivalent, unless you’re in front of a judge that requires that sort of knowledge to be included in an ESI protocol. A lot of times we’ll find that in state court, sometimes that can be more useful, but in federal court, the judges are well aware of what the party’s discovery obligations are under the Federal Rules of Civil Procedure, and that language is not necessary to include in an ESI protocol.

Final takeaway, be reasonable. Reasonableness is always our starting point and our ending point in terms of discovery. What you search for, how many custodians you’re looking at. It’s always about reasonableness and proportionality. Proportionality really goes hand in hand with what’s reasonable. There’s no discussion of proportionality in this case but really the notion of asking for 100 custodians is not proportional to the needs of this particular case where you’re talking about an infringement among a 100-person bank and a two-person real estate firm. You’ve got to understand what is reasonable and make sure that you’re taking reasonable positions in front of the Court. Otherwise, you’re going to undermine anything that you come to the Court with when you’ve taken unreasonable positions in the past. The Court will have that in their head when they’re looking at additional arguments that you make in the future.

Okay, that’s our Case of the Week for this week. Thank you so much for joining me. We’ll be back again next week with another decision from our eDiscovery Assistant database. As always, if you are an ACEDS member and interested in using eDiscovery Assistant, there’s a discount available to current ACEDS members and a trial for folks that are taking the ACEDS exam. You can access both of those through your ACEDS portal. There’s information there on how to get that discount or free trial.

If you’re interested in doing a free trial of the case law and resource database and are not an ACEDS member, you can sign up for a free trial or you can reach out to us at support@eDiscoveryAssistant.com if you’d like to have a demo for your specific team, we also hold weekly demos at 9:30 AM MT/11:30 AM ET on Thursday mornings each week.

Thank you so much. Stay safe and healthy out there, and I’ll see you next week.

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