Thursday, December 1, 2011

New Model Order Limiting e-Discovery Can Substantially Lower Cost of Trademark and Advertising Litigation

A great weakness of the United States Court system is its discovery expense.  A new model court order can be adapted to trademark and advertising cases to sharply reduce the costs of the e-discovery part of these expenses.
In most cases, parties are brought to their knees by the discovery expense of federal litigation and forced to settle early without a full trial on the merits.  Increasingly, many parties balk at pursuing courtroom justice at all because of the specter of discovery expense.  In complex cases such as trademark infringement and advertising deception, discovery of electronic data (e-discovery) adds dramatically to the cost of this expense.
The Model Order and Its Limitations
Chief Judge Randall Rader of the U.S. Court of Appeals for the Federal Circuit, speaking at a bar conference, recently proposed a model order that places dramatic limits on e-discovery in patent cases.  This model order is easily adaptable to other kinds of cases and can be a powerful tool to limit the cost and inconvenience of e-discovery in trademark and advertising litigation.    
The model order places much tighter and more specific constraints on discovery of electronically stored information ("ESI") than those currently provided by the Federal Rules of Civil Procedure.  Some of the key limitations of the model order include:
  • Exclusion of peripheral metadata from general ESI production requests absent a showing of good cause.

  • Exclusion of email from “general” ESI requests.  To obtain email, parties must specifically request it.

  • Email production requests are limited to specific issues, rather than general discovery of a product or business.

  • Email production requests must identify the custodian, search terms, and time frame. 

  • Limit of five custodians per producing party for email requests, with up to five additional custodians upon agreement among the parties or a showing of “distinct need” based on the size, complexity and issues of the specific case.

  • Limit of five search terms per custodian per party, with search terms narrowly tailored to specific issues in the case.  No indiscriminate terms, such as the producing company’s name or its product name are permitted, unless combined with narrowing search criteria that sufficiently reduce the risk of over production.

Adapting the Model Order for Trademark and Advertising Cases

The model rule can be tailored to the specific issues in trademark and advertising cases.  For example, in a trademark infringement case, email production requests could be phased to occur after the parties have exchanged basic documentation about the trademarks, the products accused of infringement, and the relevant product sales. In false and deceptive advertising cases, email production requests could be phased to occur after the parties have exchanged basic documentation about the advertising, the advertising media, the ad agency file, and the profile of the target consumers. 

Effect of Using Adaptation of the Model Order
Having these limitations in a court order issued at the outset of litigation will help curb unnecessarily burdensome and costly requests for irrelevant material.  By laying out specific stipulations regarding what can and cannot be requested, ESI production will be more useful, more focused, and less wasteful.
Authors:  Paul C. Van Slyke       Tom Casagrande