ESI Protocol Disputes

ESI Protocol Disputes Addressed by Court: eDiscovery Case Law

In Raine Grp. LLC v. Reign Capital, LLC, No. 21-CV-1898 (JPC) (KHP) (S.D.N.Y. Feb. 22, 2022), New York Magistrate Judge Katharine H. Parker ruled on two ESI Protocol disputes related to search obligations and terms needed to be resolved to finalize the parties’ ESI protocol.

Case Discussion

In this case for trademark infringement and unfair competition based on the defendant’s use of the name “Reign Capital”, the defendant submitted proposals for addressing the two ESI Protocol disputes, asking that certain language regarding the parties’ search obligations be included in the ESI protocol including:

  • 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 protocol is an aid to locate responsive documents, not a replacement.
  • Defendant does not agree that Plaintiff’s search for responsive electronic documents should be limited to the foregoing individuals [six identified custodians]. Defendant wants Plaintiff to have all 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.
  • Defendant maintains that both parties have an independent obligation to search all files from all employees that could reasonably contain responsive documents to the parties’ document requests.

As for search terms, the Defendant proposed limits on the Defendant-only terms “law suit,” “hedge fund,” “private equity,” and “venture capital.” Defendant proposed limits to both-party terms “law suit,” “trademark,” “sophisticated,” and proposed that Plaintiff search for the term “real estate” /30 invest or manage or sell or sale, as follows:

  • “law suit” /30 trademark or Raine or Reign
  • “trademark” /30 Raine or Reign or enforce!
  • “sophisticated” /30 customer or consumer or client
  • “real estate” /30 invest! Or manage! Or sell or sale
  • “hedge fund” /30 invest! Or manage! Or sell or sale
  • “private equity” /30 invest! Or manage! Or sell or sale
  • “venture capital” /30 invest! Or manage! Or sell or sale

The plaintiff objected to the term “real estate” even with modifiers stating it was unduly burdensome insofar as it resulted in 1,800 hits for a single custodian and returned non-relevant documents. They also argued that no modifiers were needed for “law suit” and “trademark” because each side was searching the other’s name as stand-alone terms and because in Plaintiff’s case, “Raine” will appear in almost every single document and email. Plaintiff agreed to the other limitations proposed for “lawsuit,” “trademark,” and “sophisticated,” if Defendant dropped limitations on “hedge fund,” “private equity,” and “venture capital”, arguing that Defendant initially proposed the three Defendant-only terms without limitation and has failed to show any burden associate with the unmodified terms.

Judge’s Ruling

Regarding the first of two ESI Protocol disputes, Judge Parker stated: “The Court finds that the proposed language is unnecessary to include in the ESI protocol given applicable discovery rules and overbroad as proposed. As noted above, each party must sign its disclosures and certify that it has conducted a reasonable search. This rule is sufficient to address Defendant’s concerns about Plaintiff complying with its discovery obligations. To the extent the requested language suggests that the parties must search ‘all company files’ or ‘all files from all employees,’ the language is overbroad”, noting that the plaintiff is “a merchant bank with over 100 employees” suing “a two-person real estate development and management firm”.

Judge Parker also stated: “As to the custodians, Plaintiff has identified six employees as custodians whose emails and personal files likely contain relevant information. Defendant has not identified additional custodians likely to have relevant emails nor explained why other employees of a bank would have relevant email or personal files. Searching all files of all employees of Plaintiff certainly is certainly overbroad.” Judge Parker did advise plaintiff that searching “non-custodian sources likely to have relevant information” was part of their obligation under Rule 26.

As for the second of two ESI Protocol disputes, Judge Parker stated in citing the Court’s “broad discretion” to manage the discovery process, including determinations regarding search terms: “Search terms, while helpful, must be carefully crafted. Poorly crafted terms may return thousands of irrelevant documents and increase, rather than minimize the burden of locating relevant and responsive ESI. They also can miss documents containing a word that has the same meaning or that is misspelled.” As a result, she ruled:

  • The term “real estate” was overbroad, even with the modifiers and that defendant could explore the business overlap between the parties in a 30(b)(6) deposition.
  • “Plaintiff does not need to include its own name in a modifier” for the term “law suit”.
  • For the “terms ‘sophisticated,’ and ‘trademark,’ the proposed modifiers makes sense, as they appear to be more focused on the issues relevant to this case.”
  • “[B]ecause the modifiers possibly narrow the universe of returns, the Court will require Plaintiff to accept them” for the defendant-only terms.

After addressing the two ESI Protocol disputes, Judge Parker also ordered the parties to “submit a revised ESI protocol consistent with this ruling for the Court’s endorsement.”

So, what do you think? Do you agree that courts should have broad discretion regarding search terms?  Please share any comments you might have or if you’d like to know more about a particular topic.

Case opinion link courtesy of eDiscovery Assistant, an Affinity partner of eDiscovery Today.

Disclaimer: The views represented herein are exclusively the views of the author, and do not necessarily represent the views held by my employer, my partners or my clients. eDiscovery Today is made available solely for educational purposes to provide general information about general eDiscovery principles and not to provide specific legal advice applicable to any particular circumstance. eDiscovery Today should not be used as a substitute for competent legal advice from a lawyer you have retained and who has agreed to represent you.

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