presents
Metadata: PDFs, Electronic Redaction and
Track Changes
g
Managing Legal and Ethical Risks When Removing
Sensitive Information
A Li
Live 90-Minute
90 Mi t T
Teleconference/Webinar
l
f
/W bi
with
ith Interactive
I t
ti Q&A
Today's panel features:
Robert D. Brownstone, Law and Technology Director; Chair, EIM Group, Fenwick & West, Mountain View, Calif.
William Hoffman,, Law Offices of Will Hoffman,, Pacific Palisades,, Calif.
Thursday, August 5, 2010
The conference begins at:
1 pm Eastern
12 pm Central
11 am Mountain
10 am Pacific
You can access the audio portion of the conference on the telephone or by using your computer's speakers.
Please refer to the dial in/ log in instructions emailed to registrations.
For CLE purposes, please let us know
how many people are listening at your
y
location by
• closing the notification box
• and typing in the chat box your
company name and the number of
attendees.
attendees
• Then click the blue icon beside the box
to send
send.
For live event only.
• If you are listening via your computer
speakers, please note that the quality of your
sound will vary depending on the speed and
quality
lit off your iinternet
t
t connection.
ti
• If the sound quality is not satisfactory and you
are listening
li t i via
i your computer
t speakers,
k
please dial 1-888-450-9970 and enter your
PIN when
e p
prompted.
o p ed O
Otherwise,
e se, p
please
ease se
send
d
us a chat or e-mail [email protected]
immediately so we can address the problem.
• If you dialed in and have any difficulties
during the call, press *0 for assistance.
Metadata: Track Changes,
PDFs, Electronic Redaction
Managing Legal and Ethical Risks
Webinar – August 5, 2010
Robert D. Brownstone
William E. Hoffman
© 2010 by the respective presenters and their firms
To Scrub or Not To Scrub?
2
Agenda

I. Three Key Metadata Threats
Problems, cautionary tales & risk mitigation for each of:


A. Tracked Changes

B. Conversions to .pdf

C. Electronic redaction
II. Ethical Obligations

A.
Sending Lawyer

B.
Receiving Lawyer

C.
Discovery is Different – Usually
3
I. Metadata –
Introduction


Data about data
Information describing
the history, tracking, or
management of an
electronic document


File System Data =
atmospherics (incl. fields
in Windows Explorer)
Document (Embedded)
Data = results of
revisions in drafts of a file
4
I. Metadata Intro (c’t’d) –
Embedded Data

Generally embedded/
document data can
yield more surprises,
including:

inserted comments

white text

text in very small font
5
I. Key Threats –
A. Tracked Changes

1. The Problem


Embedded data can
track/capture:

changes made

reviewers’ name

order in which changes made
Especially in Word when
creator/modifier did not
accept/reject tracked
changes
6
I(A)(1). Tracked Changes (c’t’d) –
Dangers for Lawyers

Embedded data’s biggest threat – "90[%] of
documents in circulation began as something else"
<http://news.com.com/2102-7344 3-5170073.html?tag=st.util.print>
(citing Vanson Bourne study, "Cost of Sharing")

Hot button issue because recipient can manipulate
files to peel back onion layers by using either:
•
1) low-tech

•
2) higher-tech

•
basic tools (drop-down-menus & tabs) in Word,
Excel, PowerPoint and/or Adobe Acrobat
scrubbing/cleaning software, by clicking on
"analyze"
3) highest-tech

eDiscovery software to extract – from one file or
a batch of files – metadata in searchable form
7
I(A)(1). Tracked Changes –
Lawyers (c’t’d)
 LAWYER-created files . . . concerns:
• Documents drafted by one side
• Documents drafted by both sides
 Proposed Order e-mailed to Judge
in Word or WordPerfect format
 Written discovery and/or discovery
responses might (HAVE TO BE) be
exchanged in Word or WordPerfect
8
I(A)(1). Tracked Changes –
Lawyers (c’t’d)



E-mail attachment to client

Draft of pleading or agreement

Bill for services rendered
Confidentiality Concerns
for Legal and Sales:

Identity of other client/buyer/seller

Fees charged other client/buyer
Municipalities

Publicly posted Agenda,
Minutes or Ordinance
9
I(A). Tracked Changes (c’t’d) –
2. Cautionary Tales
 UN (Lebanese PM assassination), British
PM’s Office ("Downing Street Memo"),
Republican Social Security Administration,
Democratic National Committee, California
AG’s Office, MPAA and SCO Group. . .

Gene Koprowski, Networking: Not-so-secret documents, UPI
(2/6/06) <http://www.physorg.com/news10567.html>

Brian Bergstein, Bigger efforts made against embarrassing
'metadata', AP (2/3/06) <http://Bergstein-2-3-06.notlong.com>

Dennis Kennedy, et al., Mining the Value from Metadata, (1/1/06)
<http://www.discoveryresources.org/featured-articles/fromthe-experts/thinking-e-discovery-mining-the-value-frommetadata/print/>

Tom Zeller Jr., "Beware Your Trail of Digital Fingerprints," NYT
(11/7/05) <http://Metadata-NYT-11-7-05.notlong.com>
(quoting <http://www.un.org/news/dh/docs/mehlisreport>)
10
I(A)(2). Tracked Changes –
Cautionary Tales (c’t’d)

Litigators representing SCO chagrined when metadata
(tracked changes) in Word version of Complaint revealed
thought process re: which Linux users to target as Δ’s
Stephen Shankland, Hidden text shows SCO
prepped lawsuit against BofA (c/net 3/18/04)
<http://news.com.com/2102-7344 3-5170073.html?tag=st.util.print>
11
I(A). Tracked Changes (c’t’d) –
3. Mitigating Risks

DO any or all of these steps:

properly accept/reject tracked
changes one by one or all at once

use metadata scrubbing software

scrub before or during conversion
to portable document format (.pdf)

DON’T

hide them by choosing "Final"
from Word’s "Display for
Review" toolbar
12
I(A)(3). Tracked Changes –
Mitigating Risks (c’t’d)

Microsoft menus and the like are inadequate


See Appendix A, Brownstone Bibliography, § A
So, especially for e-mail attachments, use
software that works for tracked changes and
other metadata. Examples:




Payne Consulting Group's (PCG's) Metadata Assistant
<www.payneconsulting.com/products>
Workshare Professional 5.2 suite; or Workshare Protect 6.0
<www.workshare.com/products/wsprofessional>
Esq Inc.’s Iscrub
<esqinc.com/section/products/2/iscrub.html>
Litera’s Metadact
<www.litera.com/products/metadact.html>
13
I(A)(3). Mitigating Risks (c’t’d) –
Other Soft-/Hard- ware

Macs

3BView’s 3BClean
<www.3bview.com/index.php?option=com content&view=article&id=
62:technical-overview&catid=6:product-articles&Itemid=93>


Sharon D. Nelson, SCRUBBING A MAC'S METADATA: A
BIT OF A PUZZLER, Ride the Lightning (7/23/09)
<ridethelightning.senseient.com/2009/07/scrubbing
-a-macs-metadata-a-bit-of-a-puzzler.html>
WordPerfect’s built-in features

Laura Acklen, Saving WordPerfect Files Without
Metadata, Corel (last visited 7/28/10)
<http://www.corel.com/servlet/Satellite?pagename=Corel3/Section/Disp
lay&sid=1047024315119&gid=1047024331836&cid=1144159894033>

Richard M. Georges, Saving WordPerfect Files Without
Metadata, FutureLawyer (7/23/10)
<http://futurelawyer.typepad.com/futurelawyer/2010/07/savingwordperfect-files-without-metadata.html>
14
I(A)(3). Tracked Changes –
Mitigating Risks (c’t’d)

Goalkeeper Prompts – Examples:
15
I(A)(3). Mitigating Risks
Goalie Prompts

(c’t’d)
–
(c’t’d)
Also, “Reply to All” warnings

See, e.g.,
<www.sperrysoftware.com/outlook/Reply-To-All-Monitor.asp>
16
I(A)(3). Tracked Changes –
Mitigating Risks (c’t’d)

CAVEAT: "Mind the [Mobile] Gap"

Attachments created and sent
– or forwarded – via: web access to email system, e.g., Outlook Web Access
(OWA); OR smartphones/PDA’s

See generally these Microsystems items:

Filling the Metadata Gap; The Next Generation
of Metadata Risks & Solutions (3/31/10)

Cathy Brode, The Often Overlooked
Mobile Security Gap, 3BView (12/15/09)

See also

Neil Squillante, Workshare Protect Server: Read Our
Exclusive Report, TechnoLawyer Blog (4/15/10)
17
I(A)(3). Tracked Changes –
Mitigating Risks (c’t’d)

For law firms and others, far better
to scrub outgoing copies day to day
than to try to batch-scrub after the fact

Technological limitations

Ethical issues

See, e.g., State Bar of Calif. Standing Comm. on Prof’l
Resp. & Conduct, Formal Op. No. 2007-174 (8/4/07)
<ethics.calbar.ca.gov/LinkClick.aspx?fileticket=kiSRjKqnMBg%3d&tabid=838 >

Public records issues

Lake v. City of Phoenix ("Lake II"),
2009 Ariz. LEXIS 257 (Ariz. 10/29/09)
<www.supreme.state.az.us/opin/pdf2009/CV090036PR.pdf>

Other pertinent decisions – including
one from 2010 – in Bibliography, § B
18
I. B. Conversions
Into .PDF
 1. The Problem
• Some metadata migrates
• Just press Ctrl+D to
see pre-conversion:
 Title
 Author, etc. . . . .
•
For court warnings, see, e.g., Sharon D.
Nelson, Court Warns Lawyers to Scrub Metadata
Before PDF Conversion, Ride The Lightning (2/25/10)
<ridethelightning.senseient.com/2010/02/court-warnslawyers-to-scrub-metadata-before-pdf-conversion.html >
19
I(B). Conversions Into .PDF –
2. Cautionary Tales
 Alabama Ethics Opinion
<www.alabar.org/ogc/PDF/2007-02.pdf>
 Corn Growers letter
<http://politechbot.com/docs/corn.growers.google.congress.061008.pdf>
•
Declan McCullough, Corn farmers take
anti-Google fight to Washington, c/net
(6/11/08) <http://news.cnet.com/830113578 3-9965555-38.html?hhTest=1>
•
Declan McCullagh, Secretive D.C. firm
says corn growers‘ anti-Google letter is
legit, c/net (6/12/08)
<http://news.cnet.com/8301-13578 39966971-38.html?hhTest=1>
•
CNET, Daily Debrief: Corn farmers vs.
Google (video re: "Farm lobbyist [sic]
oppose Yahoo-Google ad deal")
<http://video.techrepublic.com.com/242213792 11-205590.html>
20
I(B). Conversions (c’t’d) –
3. Risk Mitigation


Best to scrub metadata
BEFORE or DURING
conversion to .PDF
Or AFTER. Some help is
here in Adobe 8 & 9
("Examine Document")
•
<http://blogs.adobe.com/acrolaw/met
adata issues/>
•
<www.adobe.com/products/acrobat/so
lutions/legal/productinfo/features/>
•
<http://help.adobe.com/en US/Acroba
t/9.0/3D/WS7E9FA147-10E3-43919CB6-6E44FBDA8856.w.html>
21
I. C. Electronic
Redactions
 1. The Problem
• When is redaction needed?

Protective Order (incl.
multi-tier/AEO)

Government inquiry responses

ECF/CM . . . PERSONAL
DATA IDENTIFIERS:
 Now nationwide . . . via
FRCP 5.2 (eff. 12/1/07)
22
<www.law.cornell.edu/rules/frcp/Rule5 2.htm>
I(C)(1). Redactions—
The Problem (c’t’d)
 Out of sight . . . out of mind?
 May just be an overlay
 "Hidden" text may be searchable and copy-able for pasting
into another document
 "Under seal" information or PII
may be exposed by a friend,
foe or neutral (court, e.g.)
23
I(C). Redactions (c’t’d) –
2. Cautionary Tales
 NEW! TSA redaction gaffe
• PDF Itself with black boxes removed

<http://cryptome.org/tsa-screening.zip>
• Articles:

<http://www.betanews.com/article/The-PDF-redactionproblem-TSA-may-have-been-using-oldsoftware/1260466899>

<www.computerworld.com/s/article/print/9142141/Anal
ysis TSA document release show pitfalls of electronic
redaction?taxonomyName=Security&taxonomyId=17>

<www.wanderingaramean.com/search/label/Screening%
20Management%20SOP> (linking to related posts)
• Satirical Video:

<www.thedailyshow.com/watch/wed-december-92009/theory-v--practice---tsa-leak>
24
I(C)(2). Redactions –
SNAFUS (c’t’d)
 25 Things Facebook Couldn't Keep Secret In
Court, Information Week (2/12/09)
<www.informationweek.com/shared/printableArticle.jhtml;jsessioni
d=PVULRFVJRLOT0QSNDLRSKHSCJUNN2JVN?articleID=214000046>
•
linking to <http://docs.justia.com/cases/federal/districtcourts/california/candce/5:2007cv01389/189975/474/0.pdf>
[may not open in Internet Explorer; will open in Mozilla Firefox]
 GE Suffers a Redaction Disaster, Conn. L.
Trib. (5/28/08) ("sensitive information
easy to access behind black veil")
<www.law.com/jsp/lawtechnologynews/PubArticleLTN.jsp?id=1202421717785>
 Error by FTC Reveals Whole Foods' Trade
Secrets, AP (8/15/07) <www.washingtonpost.com/wpdyn/content/article/2007/08/14/AR2007081401784 pf.html>
25
I(C)(2). Redactions –
SNAFUS (c’t’d)

AT&T leaks sensitive info in NSA suit,
c/net (5/30/06) <http://news.com.com/2102-1028 36077353.html?tag=st.util.print>

Linking to
<www.politechbot.com/docs/att.not.redacted.brief.052606.pdf>

IRONY . . . .
26

See
<www.nsa.gov/ia/ files/support/I733-028R-2008.pdf>
I(C)(2). Redactions –
SNAFUS (c’t’d)
 More PDF Blackout Follies, Slashdot (6/22/06)
<http://it.slashdot.org/article.pl?no d2=1&sid=06/06/22/138210>
linking to <www.sfgate.com/c/acrobat/2006/06/22/BALCO quash subpoena sfchronicle.pdf>
 Copy, Paste and Reveal, Legal Times (1/30/06) (U.S.
report re: fatal shooting of Italian intelligence officer;
secret details revealed re: manning of security
checkpoints) <http://Lesemann-1-30-06.notlong.com>
 See R. Brownstone, et al., Exposing Redaction, 9 No.
10 E-Commerce L. Rep. 7 (West Oct. 2007)
<www.fenwick.com/docstore/Publications/IP/IP bulletins/IP Bulletin Fall 2007.pdf>
•
Expanded version – Secrets Easily Leaked by Friend or Foe
In Publicly Filed .PDF Documents, 13 No. 1 Cyberspace
Lawyer 1 (West Jan./Feb. 2008) – available from presenter
27
I(C). Redactions (c’t’d) –
3. Risk Mitigation

DO’s:


High Tech:

MS Word redaction tool; OR

Acrobat Pro 8.0 or 9.0 redaction tool
Low Tech:

print then black-out (or vice versa)

then scan

then OCR
28
I(C)(3). Redaction –
Mitigating Risks

(c’t’d)
DON’T’s:

Microsoft Word’s borders/shading

Microsoft Word’s highlighter
[UNLESS YOU THEN PRINT, SCAN & OCR]
29
I(C)(3). Redaction –
Mitigating Risks

(c’t’d)
TO LEARN MORE:




Rick Borstein, Acrobat for Legal Professionals,
Redaction segment (last updated 6/27/10)
<http://blogs.adobe.com/acrolaw/redaction/>
Kim Walker, How to Keep Sensitive Data Blacked
Out, Pa. Legal Intelligencer (3/19/10)
<http://www.law.com/jsp/lawtechnologynews/
PubArticleFriendlyLTN.jsp?id=1202446452557>
Free White Paper: PDF redaction: what every
business should know, DocsCorp (12/11/09)
<http://www.docscorp.com/public/downloadTri
al/RedactionWhitepaperPDFT.cfm>
Summary of changes from Acrobat 7; Top
Features for Legal Professionals, Adobe (9/8/08)
<http://blogs.adobe.com/acrolaw/A9 7-8-9-comparison.pdf>
30
II. Ethical Obligations – Inadvertent
Disclosure of Confidential Metadata

Metadata ethics = subset of
broader area of inadvertent
disclosure in general . . .

Overview chart of nationwide
metadata ethics opinions:
•
<abanet.org/tech/ltrc/fyidocs/metadatachart.html>
31
II. Ethical Obligations –
Inadvertent Disclosure

(c’t’d)
A lawyer’s ethical duty varies
whether the lawyer has:
• sent confidential metadata;
• received confidential metadata; or
• disclosed confidential metadata
as part of discovery

N.B. The jurisdiction governing a lawyer’s
conduct may provide a different rule re
metadata as distinct from other ESI
32
II. Ethics – A. Sending Lawyer –
Basic Rules – Confidentiality

ABA Model Rules of Professional Conduct
[virtually all states have the same or similar
rules as the following]
• Rule 1.6 Confidentiality of Information
 "(a) A lawyer shall not reveal information
relating to the representation of a client unless
the client gives informed consent, the disclosure
is impliedly authorized in order to carry out the
representation or the disclosure is permitted by
[certain specific exceptions, e.g., to prevent
death or substantial bodily harm]."
33
II(A). Sending – Basic Rules –
Confidentiality (c’t’d)

A lawyer has a duty "[t]o maintain
inviolate the confidence, and at every
peril to himself or herself to preserve
the secrets, of his or her client."
•

Cal. Bus. & Prof. Code § 6068(e)(1).
A lawyer’s duty under Rule 1.6
"includes taking care . . . to employ
reasonably available technical means
to remove [confidential] metadata
before sending the document."
•
D.C. Bar Opinion 341 (Sept. 2007)
34
II(A). Sending – Basic Rules –
Duty of Competence

"Competent representation requires the legal
knowledge, skill, thoroughness and
preparation reasonably necessary for the
representation."
•

ABA MRPC Rule 1.1 Competence
"[A] lawyer . . . [must] avoid improper
disclosure of confidential and privileged
information in metadata in electronic
documents."
•
Minnesota Lawyers Professional Responsibility Board
Opinion No. 22 (Mar. 26, 2010) ("Minn. # 22")
35
II(A). Sending – Basic Rules –
Competence (c’t’d)

Competence requires that
lawyers understand that:
•
metadata is created in the generation
of electronic documents,
•
transmission of electronic documents
will include transmission of metadata,
•
recipients of the documents can
access metadata, and
•
actions can be taken to prevent or
minimize the transmission of
metadata."
Minn. # 22
36
II(A). Sending – Basic Rules –
Related Rules

ABA Rule 5.1 Responsibilities Of
Partners, Managers, And Supervisory
Lawyers requires those with managerial
authority to ensure that the firm and its
lawyers follow the Rules of Professional
Conduct.
• See also Rule 5.3 Responsibilities
Regarding Nonlawyer Assistants

Hence, a lawyer must become
knowledgeable about metadata, and a
firm must provide for the acquisition of
such knowledge.
37
II(A). Sending – Basic Rules –
Related Rules (c’t’d)


Rule 5.1 may require the
implementation of a firm-wide
application to scrub certain outgoing
e-mail to remove metadata.
"[L]awyers must either acquire
sufficient understanding of the
software that they use or ensure that
their office employs safeguards to
minimize the risk of inadvertent
disclosures." D.C. Bar Opinion 341
(Sept. 2007) (emphasis added)
38
II(A). Sending –
Bottom Line

Same basic rules generally
applicable to ESI . . .
• "[A] lawyer must use reasonable care to prevent
the disclosure of confidential client information
hidden in metadata when [sending e-mail] . . . ."
•
North Carolina State Bar 2009 Formal Ethics Op. 1 (Jan. 15, 2010)
• "Lawyers must exercise reasonable care to
prevent the disclosure of confidences and
secrets contained in ‘metadata’ in documents
they transmit electronically . . .."
•
New York State Bar Association Opinion 782 (Dec. 8, 2004)
39
II. Ethics – B. Receiving
Lawyer – Different Standards



Unlike rules prohibiting the disclosure
of confidential metadata, the rules
regarding the receipt of ESI containing
metadata may differ by jurisdiction.
The most controversial state ethics
opinions prohibit a lawyer who has
received ESI to examine that ESI for
metadata, often called "data mining."
Generally, any such prohibition applies
in the context of a lawyer’s receipt of
materials outside discovery.
40
II(B). Receiving – Different
Standards (c’t’d)

Example:

A lawyer who receives an e-mail
from another party or another
party's lawyer must refrain from
searching for and using
confidential information found in
the metadata embedded in the
document.”

N.C. 2009 Formal Ethics Opinion 1(emphasis added).
41
II(B). Receiving – The
General Rule

For each jurisdiction, the action
required of a lawyer who receives
confidential metadata through
inadvertence is the same as the
case in which he/she has received
any other type of confidential ESI
through inadvertence.
42
II(B). Receiving – The
General Rule (c’t’d)

For example, if a rule prohibits
a lawyer from continuing to
read a document once he/she
has ascertained it is privileged,
a lawyer may not continue to
read metadata once he/she has
ascertained it is privileged.
43
II(B). Receiving – The
General Rule (c’t’d)

Similarly, if a rule requires a
lawyer who has received a
privileged document to notify
the sender, the same rule also
requires the lawyer to notify the
sender if she/he has received
privileged metadata.
44
II(B). Receiving – Specific States’
Rules on Reading Metadata

Prohibited
• Lawyer examination of received
ESI for metadata prohibited by:
 Alabama
 Arizona
 Florida
 Maine
 New Hampshire
 New York
 North Carolina
45
II(B). Receiving – Reading
Metadata – Prohibited

(c’t’d)
"A lawyer may not make use of
computer software applications to
surreptitiously ‘get behind’ visible
documents or to trace e-mail."
• Conclusion, New York State Bar Association
Opinion 749 (Dec. 14, 2001)
46
II(B). Receiving – Reading Metadata –
Allowed Absent Actual Knowledge

Lawyer examination of received
ESI for metadata prohibited only if
the receiving lawyer has actual
knowledge that he/she has
received confidential metadata
through inadvertence:
• Colorado
• D.C.
• West Virginia
[should it be with the "prohibited" group?]
47
II(B). Receiving – Reading Metadata –
Allowed Absent Knowledge (c’t’d)

"[I]f a lawyer has received electronic
documents and has actual knowledge
that metadata was inadvertently sent,
the receiving lawyer should not review
the metadata before consulting with the
sending lawyer to determine whether
the metadata includes work-product or
confidences."

West Virginia State Bar Ethics Opinion L.E.O.
2009-01 (June 10, 2009)
48
II(B). Receiving – Reading Metadata –
Allowed Absent Knowledge (c’t’d)


But . . .
"The [W. Va.] Board finds . . .
there is a burden on a lawyer
receiving inadvertently provided
metadata to consult with the
sender and abide by the sender's
instructions before reviewing
such metadata."

Id.
49
II(B). Receiving – Reading Metadata –
Case-by-Case Basis

A lawyer must determine
whether to use metadata on
a case-by-case basis
• Pennsylvania
50
II(B). Receiving – Reading
Metadata – No Prohibition

Generally no prohibition:
• Maryland
• Vermont
• Minnesota (but a fact specific
question)

This is also the ABA’s position
51
II(B). Receiving – Reading
Metadata – No Prohibition

"Opinion 22 is not meant to suggest
there is an ethical obligation on a
receiving lawyer to look or not to look for
metadata in an electronic document.
Whether and when a lawyer may be
advised to look or not to look for such
metadata is a fact specific question
beyond the scope of this Opinion."
• Minn. # 22
52
II(B). Receiving – Reading
Metadata – Broad Rule

Consider the breadth of Maryland’s rule:
• "Subject to any legal standards or
requirements (case law, statutes, rules of
procedure, administrative rules, etc.), . . .
there is no ethical violation if the recipient
attorney . . . reviews or makes use of the
metadata without first ascertaining whether
the sender intended to include such
metadata."
 Maryland State Bar Association - Committee
on Ethics, Ethics Docket No. 2007-09
53
II(B). Receiving – Reading Metadata –
Other Jurisdictions


Look for guidance to the jurisdiction’s
rules regarding a lawyer’s duty on
receipt of any confidential ESI and treat
those rules as a minimum duty.
No jurisdiction has a more lenient rule
for confidential metadata than it does
for other confidential ESI.
54
II(B). Receiving – Reading
Metadata – Wrinkles


One must carefully read any
pertinent opinion for the
particular application to one’s
immediate circumstances.
As noted above, some opinions
presume that searching for
metadata is, per se, searching
for confidential information.
• See, e.g., New York and Alabama.
55
II(B). Receiving – Reading
Metadata – Wrinkles

Other opinions, however, more precisely
prohibit the lawyer from searching for
confidential information in the metadata.
•
A “lawyer must refrain from searching for and
using confidential information found in the
metadata embedded in the document.”


N.C. 2009 Formal Ethics Opinion 1 (emphasis added).
A minimum rule of thumb is that one
cannot go looking for metadata with a
bad intent, i.e., to discover another’s
confidences.
56
II(B). Receiving – Other Duties Upon
Discovering Confidential Info.


Most jurisdictions require the recipient
to notify the sender when the recipient
knows or should know he/she has
received confidential metadata
through inadvertence.
Some also prohibit use of the received
metadata until the matter is resolved
between the parties or by a court.
• ABA MRPC Rule 4.4(b)
• Minn. # 22
57
II(B). Receiving (c’t’d) –
Professional Judgment
 Even in those jurisdictions allowing
free exploration of confidential
metadata, the ABA comments:
• “Where a lawyer is not required by
applicable law to do so, the decision to
voluntarily return such a document is a
matter of professional judgment . . . .”
 ABA MRPC Rule 4.4 Comment [3].
58
II(B). Receiving – Professional
Judgment (c’t’d)
 Also ask in such
circumstances:
• What is required by
the duty of diligent
representation?
• Should one consult
with one’s client
before returning a
document?
59
II. C. Discovery is
Different – Usually

Quick Intro to Discoverability of
Metadata in Client-Created eDocs:

Inadvertent Disclosure Law

Preservation/Spoliation


Scope-of-Production
stipulations/agreements
For an overview of case-law re:
metadata discoverability, see
Appendix B, eDiscovery Slides
60
II. C. Discovery is
Different – Usually
 A lawyer must ensure
he/she does not produce
confidential information to
another not entitled to see it.
 A receiving lawyer, however,
is generally allowed to
search for and examine any
produced metadata.
61
II(C). Discovery (c’t’d) –
Basic Rule
 Same rule re producing
metadata as re ESI
generally
 Exercise reasonable care
to prevent disclosure of
confidential client
information hidden in
metadata.
62
II(C). Discovery (c’t’d) – Redact
Responsive Confidential Info.
 If a document/ESI contains responsive
confidential information, the producing
lawyer must redact such information and
detail the confidentiality claim on a
privilege log.
 If a responsive document is otherwise
not privileged while part of the metadata
may be, the producing party must redact
the privileged metadata and detail the
claim on a privilege log.
63
II(C). Discovery –
Redaction (c’t’d)
 Instances in which only part of the
metadata is privileged.
 If other non-privileged metadata is
responsive, such metadata must not
be redacted.
 Other metadata, while not privileged,
may be either non-responsive or of
de minimis importance.
64
II(C). Discovery –
Redaction (c’t’d)
 Depending at least in part on content of
prior stipulation, if any, as to format(s)of-production (at CMC or later):
• Appropriate, and perhaps necessary, to
remove all non-responsive metadata.
• Metadata integral to a document that is
responsive, however, should probably be
deemed responsive on that basis.
• Metadata that evidences a document’s
integrity generally should not be removed.
65
II(C). Discovery – Do Not Delete
Responsive Metadata
 If one reasonably anticipates
litigation, one must be very careful
regarding routine deletion of certain
metadata.
 For example, one must not delete
tracked changes if the changes show
contract negotiations between
business people if the contract is the
subject of likely litigation.
 Such deletion may be spoliation.
66
II(C). Discovery – Do Not Delete
Responsive Metadata (c’t’d)
 “[A] lawyer must be careful in situations where
electronic documents constitute tangible evidence.
Rule 3.4(a) prohibits altering, destroying or
concealing material having potential evidentiary
value. . . .”
 “[R]emoval of metadata may be prohibited and must
be produced when requested and not objected to.
However, any metadata that is privileged can still be
protected and exempt from discovery, upon proper
assertion of a privilege.”

W. Va. State Bar Ethics Op. L.E.O. 2009-01 (June 10, 2009)
67
II(C). Discovery – Do Not Delete
Responsive Metadata (c’t’d)
 “Removing metadata from
evidentiary documents in the
context of litigation or in certain
other circumstances may be
impermissible or illegal.”
 Minn. # 22
68
II(C). Discovery – Metadata
Receiving Side –Basic Rule
 Same as the case in which a lawyer has
received any other type of ESI in
discovery.
 Jurisdictions that prohibit the
examination of metadata received
outside the discovery context generally
allow the examination of metadata
embedded in ESI produced in discovery.
 Some opinions use overbroad language,
but careful reading suggests broad rule
against even searching for metadata
inapplicable to ESI and metadata
received in discovery.
69
II(C). Discovery
Is Different . . .
 “Absent express authorization
from a court, it is ethically
impermissible for an attorney
to mine metadata from an
electronic document he or she
inadvertently or improperly
receives from another party.”
 Alabama State Bar Ethics Op. RO2007-02 (March 14, 2007)
70
II(C). Discovery Is
Different . . .
(c’t’d)
 But . . .
 “One possible exception to the prohibition
against the mining of metadata involves
electronic discovery. . . . [P]arties may be
sanctioned for failing to provide metadata
along with electronic discovery submissions.
. . . [T]he mining of an email may be vital . .
.. In Enron type litigation, the mining of
metadata may be a valuable tool in tracking
the history of accounting decisions and
financial transactions.”
• Id.
71
II(C). Discovery – Duty
of Competence
 As part of a lawyer’s duty of competence
(including diligence), a lawyer should
examine all produced metadata to the
same extent the lawyer would examine
similar information in non-metadata ESI.
 A lawyer may also use metadata, for
example, in “automatic” computer
triaging a set of documents for further
consideration, as the lawyer would be
entitled to do with similar ESI.
72
II(C). Discovery – Receiving Side –
Additional Action Required
 For each jurisdiction, in discovery,
the action required of a lawyer
who receives inadvertently
produced confidential metadata is
the same as the case in which
he/she has received any other
type of inadvertently produced
confidential ESI.
73
II(C). Discovery – Receiving –
Additional Action (c’t’d)
 Hence, if one has a duty to notify
the producing lawyer if one has
received any type of confidential
information through inadvertence,
the fact that the confidential
information is metadata does not
change the duty.
74
II(C). Discovery – Receiving –
Additional Action (c’t’d)
 N.B. Typical procedural rules, including the
F.R.C.P., only require the receiving lawyer to act
after notice from the producing lawyer.
 “A lawyer may be subject to a number of
obligations other than those provided by the
MRPC in connection with the transmission and
receipt of metadata, including obligations under
the Federal Rules of Civil Procedure and the
Minnesota Rules of Civil Procedure.”

Minn. # 22
75
Conclusion/
Questions

One last scary thought:

“alternate data streams (ADS)”
See, e.g., <informit.com/articles/article.aspx?p=413685>

Robert D. Brownstone

William E. Hoffman
Fenwick & West LLP
Will Hoffman Document/ESI Specialist
<[email protected]>
<[email protected] >
<fenwick.com/attorneys/4.2.1.asp?aid=544>
<willhoffman.com/willbio.aspx>
76
Appendix A – Robert D. Brownstone, Esq. –
Metadata & Electronic Redaction – Supplemental Bibliography (7/27/10)
A. Articles as to Microsoft Office Deficiencies
1. NSA, Redacting with Confidence: How to Safely Publish Sanitized Reports Converted From
Word to PDF (3/18/08) <http://www.nsa.gov/ia/ files/support/I733-028R-2008.pdf>. See also
older version (2/2/06) <www.fas.org/sgp/othergov/dod/nsa-redact.pdf>
2.
Appligent, Correcting the Record: A Response to Redacting with Confidence (Feb. 2, 2006) <web.archive.org/
web/20070324173116/http://www.aiimexpo.com/exbdata/2834/brochures/Correcting the record.pdf>
3. Randall Farrar, 10 Reasons Why Microsoft Office’s Document Inspector is Not an Enterprise Metadata
Management Tool, Esquire Innovations, Inc. (Sep. 24, 2008) <http://randallfarrar.com/?p=34#/cat=1>
B. Public Records Decisions (some; there are MANY more on privacy, back-ups, etc.)
•
Irwin v. Onondaga County Resource Recovery Agency, 72 A.D. 3d 314, 895 N.Y.S. 2d 262 (4th Dep’t
Feb. 11, 2010) (ordering system metadata to be included in response to FOIL request for electronic
photographs) <http://www.nycourts.gov/ad4/court/Decisions/2010/02-11-10/PDF/1420.pdf>
•
Lake v. City of Phoenix (“Lake II”), 2009 Ariz. LEXIS 257 (Oct. 20, 2009) (“if a public
entity maintains a public record in an electronic format, then the electronic version,
including any embedded metadata, is subject to disclosure under our public records
laws”) <www.supreme.state.az.us/opin/pdf2009/CV090036PR.pdf>
•
O'Neill v. City of Shoreline, 145 Wash. App. 913, 187 P.3d 822 (July 21, 2008) (“metadata associated with
the e-mail . . . discussed at [the relevant] meeting, or some portion of it, is . . . a public record[; w]e do not
rule on the more general question whether e-mail or metadata . . . transmitted to personal e-mail accounts,
without more, is” a public record) <mrsc.org/mc/courts/appellate/145wnapp/145wnapp0913.htm>, review
granted, 208 P.3d 554 (Wash. Apr. 28, 2009)
•
Burnett v. County of Bergen, 198 N.J. 408, 968 A.2d 1151 (Apr. 27, 2009) (requiring
requestor to pay costs of redacting Social Security Numbers – from land title records)
<http://lawlibrary.rutgers.edu/courts/supreme/a-43-08.doc.html>
•
Wiredata, Inc. v. Village of Sussex, 298 Wis. 2d 743, 729 N.W.2d 757 (Ct. App. Jan. 3, 2007) (finding
violation of open records law via disclosure of .pdf image files instead of provision of database access)
<http://www.wicourts.gov/ca/opinion/DisplayDocument.pdf?content=pdf&seqNo=27629>
C. Presentations by Brownstone
1. -
9.
NCC national broadcasts/webinars – 4/10; 8/09; 3/09; 9/08; 5/08; 2/08; 10/07; 4/07 & 11/06
10.
Rossdale Group & Miami Legal Resources national broadcast co-presenter – 3/10
11. - 13.
Lorman Education Services nationally broadcast webinars – 2/10; 8/09; and 2/09
14. - 25.
Strafford Publications national broadcast co-presenter – 12/09; 5/09;
10/08; 5/08; 12/07; 9/07; 3/07; 11/06; 3/06; 12/05; 9/05 and 7/05
26. - 27.
Legal Services Corporation (LSC) conferences – 10/09 (St. Louis); 9/08 (San Antonio)
28.
San Diego Cty. Bar Ass’n webinar – 6/09
29. - 30.
Blue Cross Blue Shield Ass’n Attys. – webinar (7/08) & conf. (5/08, Glendale, AZ)
31.
California State Bar Annual Meeting – 9/07 (Anaheim, CA)
32.
Santa Clara County Bar Association (SCCBA) panel – 9/07 (San Jose, CA)
A-1
Appendix A – Robert D. Brownstone, Esq. –
Metadata & Electronic Redaction – Supplemental Bibliography (7/27/10)
D. Publications by Brownstone
1. Robert D. Brownstone, Electronic Redaction– Be a Do-Bee, not a Don't-Bee, Cal. State Bar Sections E-NEWS
(Mar. 30, 2010) (copy available from author)
2. Robert D. Brownstone, eFiling: Conversions, Redactions and Uploads, Oh My!, 30 The Bottom Line No. 5,
at 3-8 (Oct. 2009), <www.calbar.org/members only/lpmt/pdfs/the-bottom-line 2009 vol-30 no-5.pdf#page=3>
(Cal. State Bar LPMT Section membership may be required to use URL; or available from author)
3. Robert D. Brownstone, Cal. Guide to Opening & Managing a Law Office, Ch. 6, Technology, Cal. State
Bar (2009): Computer Security, Privacy & Ethics Concerns, pp. 268-90 (co-author); eFiling, pp. 291309, purchase at <http://sections.calbar.ca.gov/About/SectionsBookstore.aspx>
4. Robert D. Brownstone, Metadata: To Scrub or Not To Scrub; That is the Ethical Question,
Cal. B.J. (Feb. 2008) <http://apps.calbar.ca.gov/mcleselfstudy/mcle home.aspx?testID=27>
5. Robert D. Brownstone and Gideon Grunfeld, Saying Goodbye Just Got More Expensive; Complying With
New Ethics Opinion Regarding Returning Electronic Data to Client at End of Representation, 29 The
Bottom Line, No. 2 (Feb. 2008) <http://lawfirmdevelopment.com/newsite/wpcontent/uploads/2009/01/complying-with-coprac-decision.pdf>
6. Robert D. Brownstone, Todd R. Gregorian and Michael A. Sands, Secrets Easily Leaked by Friend or
Foe In Publicly Filed .PDF Documents, 13 No. 1 Cyberspace Lawyer 1 (West Jan./Feb. 2008) (co-author)
(longer version of Exposing Redaction below), available upon request from the authors or by subscription
at <http://west.thomson.com/store/product.aspx?r=127062&product id=37005132>
7. Robert D. Brownstone, Todd R. Gregorian and Michael A. Sands,
Exposing Redaction, L.A.D.J. & S.F.D.J. (Oct. 15, 2007), available at
<http://www.fenwick.com/docstore/Publications/IP/IP bulletins/IP Bulletin Fall 2007.pdf>
8. Robert D. Brownstone, Redaction Reaction; Do’s and Don’ts, 28 The Bottom Line, No. 3, at 7, 24 (June
2007) <http://members.calbar.ca.gov/sections/lpmt/bottomline/pdfs/the-bottom-line 2007 vol-28 no3.pdf#page=7> (Cal. State Bar LPMT membership required to use URL; available from author)
9. Robert D. Brownstone, Preserve or Perish; Destroy or Drown – eDiscovery Morphs Into EIM,
8 N.C.J. L. & Tech. (N.C. JOLT), No. 1, at 1, 2, 9-11, 42, 44-50, 53, 57 (Fall 2006)
<http://jolt.unc.edu/sites/default/files/8 nc jl tech 1.pdf>
10. Robert D. Brownstone, The Complexity of Metadata, EDRM (May 2006) <http://Metadata-EDRM.notlong.com>
11. Robert D. Brownstone, Collaborative Navigation of the Stormy e-Discovery Seas,
10 Rich. J.L. & Tech. 53, (2004) <http://law.richmond.edu/jolt/v10i5/article53.pdf>, at 1, 2, 8, 12, 20.
12. Lisa M. Arent, Robert D. Brownstone and William A. Fenwick, EDiscovery: Preserving, Requesting
& Producing Electronic Information, 19 Santa Clara Computer & High Tech. L.J. 131 (2002)
<http://www.fenwick.com/docstore/publications/Litigation/ediscovery.pdf>, at 3, 14 (.pdf pp. 17, 28)
Full Brownstone Bio & Bibliography available at
<fenwick.com/attorneys/4.2.1.asp?aid=544>
A-2
Strafford
August 5, 2010
Appendix B
Metadata – Bonus Slides –
eDiscovery Producibility &
Privilege Claw-backs
Robert D. Brownstone, Esq.
THESE MATERIALS ARE MEANT TO ASSIST IN A GENERAL
UNDERSTANDING OF CURRENT LAW AND PRACTICES.
THEY ARE NOT TO BE REGARDED AS LEGAL ADVICE.
THOSE WITH PARTICULAR QUESTIONS
SHOULD SEEK ADVICE OF COUNSEL.
Fenwick & West LLP
Silicon Valley Center
801 California Street
Mountain View, CA 94041
Phone: 650.988.8500
www.fenwick.com
©
B-1
eDiscovery of Client-Created
Docs. – Metadata Disclosed
EIM GROUP

A. Discoverability of Metadata

The Discovery Context – Overview
 Preservation/Spoliation
 Inadvertent disclosure law
 Scope-of-Production
©
stipulations/agreements
B-2
A. Discoverability (c’t’d) –
Prior Case Law

When needed/relevant:
EIM GROUP

Ex: definitive eEvidence regarding
alleged fabrication or back-dating

Munshani v. Signal Lake Venture Fund II,
2001 Mass. Super. LEXIS 496 (10/9/01)
<www.signallake.com/litigation/ma order munhshani.pdf>,
aff’d, 2004 Mass. App. LEXIS 323 (3/26/04)
<www.signallake.com/litigation/Dismissal-of-Munshani-Appeal.pdf>

Premier Homes & Land v. Cheswell, Inc.,
240 F. Supp. 2d 97 (D. Mass. 2002)
<http://pacer.mad.uscourts.gov/dc/opinions/neiman
/pdf/premierhomes%2012%2002.pdf>
See also In re Pemstar, Inc. Secs. Litig.,
Civ. No. 02-1821 (D. Minn. 4/23/04)
©

B-3
A. Discoverability (c’t’d) –
Prior Case Law (c’t’d)

More recent trend, e.g. in patent cases
. . . if particularized need shown . . .
EIM GROUP

Nova Measuring Instrs. v. Nanometrics,
417 F. Supp. 2d 1121 (N.D. Cal. 3/23/06)
<http://Nova-Nanometrics.notlong.com>
(Westlaw password needed)

Hagenbuch v. 3B6 Sistemi Elettronici Industriali
S.R.I., 2006 U.S. Dist. LEXIS 10838, 2006 WL
665005 (N.D. Ill. 3/8/06) (free via PACER)
©
<https://ecf.ilnd.uscourts.gov/cgibin/show case doc?99,147207,,,,,7676829>
B-4
A. Discoverability
FRCP = Vague

(c’t’d)
–
FRCP Committee, in deliberating
re: 12/1/06 “not reasonably
EIM GROUP
accessible” change to 26(b)(2)(B)
did not resolve metadata issue

As of 12/1/06, new FRCP 34(b) for
©
RFP’s – and new 45(d)(1) re: subpoenas

non-conclusive

but do enable requestor
to ID desired format
B-5
A. Discoverability (c’t’d) –
FRCP’s impacts

FRCP 34 & FRCP 45 DO enable
requestor to specify desired format
EIM GROUP


©

Michigan First Credit Union v. Cumis Ins. Society,
2007 WL 4098213 (E.D. Mich. 11/16/07)
(.pdf and paper sufficient; no request – or need –
for native, let alone with metadata intact)
<http://MFCU-CIS-EDMich-11-16-07.notlong.com>
IF NOT specified, then what,
under FRCP 34 & 45 ?

“. . . ordinarily maintained . . .” OR

“ . . . reasonably useable . . .”
Same: CCP §§ § 2031.280(d) (parties)
and 1985.8(c)(1) (non-parties)
B-6
A. Discoverability (c’t’d) –
FRCP’s impacts

Sedona Principles:
EIM GROUP

Pre-12/1/06: absent materiality,
presumption against production

Post-12/1/06: “taking into
account the need to produce
reasonably accessible metadata
that will enable the receiving party
©
to have the same ability . . .”
B-7
A. Discoverability
Later Cases
(c’t’d)
–
 One Pre-12/1/06 FRCP Decision: "AS
EIM GROUP
MAINTAINED IN ORDINARY COURSE
OF BUSINESS" = "METADATA INTACT"
•
absent timely objection
or contrary stipulation
•
once parties had agreed to “native”
production of Excel files late in case
Williams v. Sprint/United Mgmt., 230 F.R.D. 640 (D. Kan. 9/29/05)
©
(analyzing 12/1/06 version of FRCP; contrasting FRCP 26(b)(2)(B))
<http://Williams-9-29-05.notlong.com> (free via PACER)
B-8
A. Discoverability
Williams (c’t’d)

–
Williams FACTS

EIM GROUP
(c’t’d)

Day 1 allegation: Δ re-worked
pools to improve distribution
to pass adverse-impact analysis
No prior stip re: scrubbing
metadata from, or locking
cells/data in, Excel spreadsheets
©

Age discrimination (R.I.F.) case
B-9
A. Discoverability
Williams (c’t’d)

–
Williams HELD

EIM GROUP
(c’t’d)

Spectrum of word-processing files to
spreadsheets to databases
Presumption that metadata
to be produced even if not requested
specifically in RFP

Contrast post-12/1/06
FRCP 26(b)(2)(B)
©

Up to producing party to object;
no unilateral action allowed here
B-10
A. Discoverability (c’t’d) –
Post-12/1/06 Cases

Need to Show Need
©
EIM GROUP


“follow[ing] general presumption
against metadata production”
“[h]owever, if cause is shown (e.g.,
metadata associated with a spreadsheet), Plaintiffs may file another
motion to compel production, to the
extent that the meet and confer process
does not yield a resolution to the issue”
 Repligen v. Bristol-Myers Squibb, No. 06-004 (TJW), Order,
at 2 (E. D. Texas 1/12/07) <https://ecf.txed.uscourts.gov/cgibin/show case doc?54,94380,,,,,182,1>
B-11
A. Discoverability (c’t’d) –
Post-12/1/06 Cases

NO “DO-OVERS”

See In re Payment Card Interchange Fee
EIM GROUP
& Merchant Discount Antitrust Litig., 2007
U.S. Dist. LEXIS 2650 (E.D.N.Y. 1/12/07)
<http://Payment-Card-Antitrust-1-12-07.notlong.com>
 declining to order second/native production
of data already produced via scanning-plus-OCR
 but distinguishing prospective productions

See also Covad Commc'ns Co. v. Revonet, Inc., 267 F.R.D. 14
(D.D.C. Mar. 31, 2010) <https://ecf.dcd.uscourts.gov/cgi-
©
bin/show public doc?2006cv1892-171>
B-12
A. Discoverability (c’t’d) –
No “Do-overs” (c’t’d)

Ky. Speedway v. NASCAR, 2006 U.S. Dist.
LEXIS 92028 (E.D. Ky. 12/18/06)
EIM GROUP

relying on 12/1/06 FRCP amendments as basis for refusing
to order Δ to produce metadata for documents already produced
<https://ecf.kyed.uscourts.gov/cgi-bin/show case doc?147,46018,,,,,576,1>

Williams v. Sprint, 2006 WL 3691604 (D. Kan. 12/12/06)

increased time and effort required for hardcopy review
insufficient to justify re-production in native format
<http://Williams-12-12-06.notlong.com>
©

Wyeth v. Impax Labs., 2006 WL 3091331 (D. Del. 10/26/06)

Δ had moved to compel native production with complete metadata

under Del.’s Default Standard, upholding prior TIFF production because:

no agreement otherwise; and

no showing of particularized need for native
<http://Wyeth-Impax-10-26-06.notlong.com>
B-13
A. Discoverability (c’t’d) –
More Post-12/1/06

Some “Native” Decisions . . .

EIM GROUP





©

Aguilar v. U.S. ICE Div., 2008
WL 5062700 (S.D.N.Y. 11/21/08)
White v. Graceland College Center
for Prof’l Dev. & Lifelong Learning, Inc.,
2008 U.S. Dist. LEXIS 63088 (D. Kan. 8/7/08)
Autotech Techs. Ltd. P’ship v. Automationdirect.com, 248 F.R.D. 556 (N.D. Ill. 4/2/08)
D'Onofrio v. SFX Sports Group, Inc.,
247 F.R.D. 43 (D.D.C. 1/23/08)
Peacock v. Merrill, 2008 WL
176375 (S.D. Ala. 1/17/08)
Ryan v. Gifford, 2007 Del. Ch.
LEXIS 168 (Del. Ch. 11/30/07)
Celerity, Inc. v. Ultra Clean Holding, Inc.,
476 F. Supp. 2d 1159 (N.D. Cal. 2/28/07)
B-14
A. Discoverability (c’t’d) –
Some 2009-10 Decisions

Irwin v. Onondaga County Resource Recovery Agency,
72 A.D. 3d 314, 895 N.Y.S. 2d 262 (4th Dep’t 2/11/10)
<nycourts.gov/ad4/court/Decisions/2010/02-11-10/PDF/1420.pdf>
EIM GROUP



See also ARMA, Court Orders Production of Electronically Stored
Photos, Associated Metadata, Newswire (4/28/10)
<http://www.arma.org/news/enewsletters/index.cfm?ID=4273>
Lake v. City of Phoenix (“Lake II”), 2009 Ariz. LEXIS 257
(Ariz. 10/29/09) <www.supreme.state.az.us/opin/pdf2009/CV090036PR.pdf>
FSP Stallion 1 LLC v. Luce, 2009 U.S. Dist. LEXIS 68460
(D. Nev. 7/21/09) (in part, apparently ordering reproduction of docs. exchanged via initial disclosure)
<https://ecf.nvd.uscourts.gov/doc1/11512112850>
©

Dahl v. Bain Capital Partners, LLC, 2009 U.S. Dist. LEXIS
2551 (D. Mass. 6/22/09) (“[r]ather than a sweeping request
for metadata, the [requesting parties” should tailor their
requests”) <https://ecf.mad.uscourts.gov/doc1/09503189087>
B-15
A. Discoverability (c’t’d) –
Case Law Developing

TO LEARN MORE
EIM GROUP

<applieddiscovery.com/ws display.asp?filter=
Native%20Production%20Required>

<www.krollontrack.com/case-summaries/>

<https://extranet1.klgates.com/ediscovery/>
 NOTE
Each of those sites offers a free e-newsletter
©

B-16
eDiscovery/Metadata (c’t’d) –
B. Inadvertent Disclosure Clawbacks

1. Claw-Back Procedure in FRCP as of 12/1/06

ESI-Driven Goals of 12/1/06 FRCP Amendments:
EIM GROUP

26(b)(5)(B) – “[D]oes not address the substantive
questions whether privilege or work product
protection . . . waived or forfeited. Instead . . .
sets up a procedure to allow the responding party
to assert a claim of privilege or of work-product
protection after production.”
Rules Report at App. C-54
<uscourts.gov/uscourts/RulesAndPolicies/rules/Reports/ST092005.pdf#page=139>

45(d)(2)(B) – same for non-party subpoenas
Id. at App. C-91
<uscourts.gov/uscourts/RulesAndPolicies/rules/Reports/ST092005.pdf#page=176>
©
• 26(b)(5)(B) itself
<uscourts.gov/uscourts/RulesAndPolicies/rules/EDiscovery w Notes.pdf#page=9>, at 9-10
• STATE ANALOGUES AS WELL
B-17
B(1). FRCP Claw-Back
Procedure (c’t’d)

Pre-FRCP-Amendment Grimm Warnings:
EIM GROUP

UNLESS IN SCHEDULING or
PROTECTIVE ORDER, non-waiver
stipulation (clawback or quick peek)
risky & maybe not enforceable

states’ laws and circuits’ views differ

subject-matter and “selective” waivers
Hopson v. Mayor and City Council of Baltimore,
232 F.R.D. 228 (D. Md. Nov. 22, 2005)
©
<www.doar.com/apps/uploads/literature33 Hopson v.Baltimore City.pdf>
B-18
B. 2. F.R.E. 502 –
Substantive

EIM GROUP

Goals = Gap-Filling & Protection
To address some of those Grimmtype concerns, F.R.E. 502 became
law on September 19, 2008

Cf. Proposed Wash. R. Evid. 502
<www.wsba.org/lawyers/groups/courtrules/october192009cou
rtrulesproceduresmeetingmaterials.pdf>, at 24-28


Comment period expired 4/30/10
Highlights:

“middle ground” approach
<uscourts.gov/uscourts/RulesAndPolicies/rules/Reports/EV052006.pdf#page=12>
©

Rejected strict-liability approach, i.e.,
inadvertent disclosure CANNOT BE
automatic subject-matter waiver
B-19
B. 2. FRE 502 (c’t’d) –
Elements

FRE 502(b) Waiver Determination Elements
EIM GROUP

Inadvertent disclosure. When made in a
Federal proceeding or to a Federal office or
agency, the disclosure does not operate as
a waiver in a Federal or State proceeding if:

(1) disclosure is inadvertent
(begs the question?!)
(2) holder of privilege or protection took
reasonable steps to prevent disclosure; and

(3) holder promptly took reasonable steps
to rectify the error, including (if applicable)
following FRCP 26(b)(5)(B)
©

B-20
(B)(2). FRE 502 (c’t’d) –
Estoppel
EIM GROUP

No-Waiver Finding Collaterally
Estops Future Waiver Contentions


Applies to both future state
and federal proceedings
Applies to non-parties to case
# 1 IF stip. in a court order

Does Congress have authority to bind
state court proceedings in this way?
©
 Due-process challenge possible . . .

<law.wlu.edu/deptimages/Law%20Review/66-2Noyes.pdf>
B-21
(B)(2). FRE 502 (c’t’d) –
Practical Tips
EIM GROUP


Three ways to exert best efforts
to try to avoid a waiver finding:

Stipulated Protective Orders

QC/QA

Claw-Backs
For analysis and sample stips, see:

©

Moore, Allan B. et al., ‘Oops, I Want That Back:’
Clawing Back Privileged Documents And New
Federal Rule Of Evidence 502, 23 MEALEY’S
LITIGATION REPORT: Ins., #20 (3/26/09)
(available on LEXIS)
Gregory P. Joseph, The Impact of Rule 502(d) on
Protective Orders, Nat’l L.J. (11/17/08)
B-22
(B)(2). FRE 502 (c’t’d) –
“Selective Waiver”

Rules Committee:
EIM GROUP


Initially added in something
on it but then pulled it out
Punted but then did sent
Congress a draft provision
 See pp. 65-69 of
<uscourts.gov/uscourts/RulesAndPolicies/rules/
Reports/EV05-2007.pdf#page=65>

Congress:

©


Did not address the issue
Did not add “selective waiver”
provision before adopting 502
But HR 4326 now pending
B-23
Conclusion/
Questions

Q+A – Robert D. Brownstone

<www.fenwick.com/attorneys/4.2.1.asp?aid=544>

650.335.7912 or <[email protected]>
Please visit F&W EIM

<www.fenwick.com/services/2.23.0.asp?s=1055>

<www.fenwick.com/services/2.23.4.asp?s=1055>
©
EIM GROUP

B-24