discovery of computer databases: An overview, The

I.

INTRODUCTION

Over the last thirty years, computers have played an increasingly prominent role in the business and professional world. Today, activities such as document creation and retention, record keeping, interoffice communication, and production control and analyses are routinely handled through the use of computers. Consequently, it is not difficult to imagine a litigation scenario that involves the discovery of some type of computerized information.

Although the original drafters of the Federal Rules of Civil Procedure may not have foreseen the current extent of the use of computer databases, the rules do address discovery in the computer age. In 1970, Federal Rule of Civil Procedure 34 was amended to include "data compilations from which information can be obtained, translated, if necessary, by the respondent through detection devices into reasonably usable form" in the definition of documents.' The Advisory Committee Notes for the 1970 amendment express the purpose and scope of the amendment:

The inclusive description of "documents" is revised to accord with changing technology. It makes clear that Rule 34 applies to electronics data compilations from which information can be obtained only with the use of detection devices, and that when the data can as a practical matter be made usable by the discovering party only through respondent's devices, respondent may be required to use his devices to translate the data into usable form. In many instances, this means that respondent will have to supply a print-out of computer data.2 The Advisory Committee considered it to be "noncontroversial" that "in this definition of what you can do, taking into account the advent of computer accounting. . . you should be able [to] . . . compel a person who has the records. in computer form, to run it off for you."3

Rule 34 makes it clear that information stored on computers is discoverable even when the information currently does not exist on paper. Simply put, for purposes of discovery it is immaterial how information is stored. Information that is not discoverable under the Federal Rules of Civil Procedure, however, does not become so merely because it is stored electronically. The same discovery guidelines that require the requested material to be relevant, to be reasonably calculated to lead to the discovery of admissible evidence, and to not be privileged apply to computerized data as well as more traditional forms of documents and things.4 II.

DISCOVERY METHODS

The drafters of the revised Rule 34 chose to deal with the discovery of information stored in computerized form by treating it no differently than other documents or information stored on paper. Instead of creating a separate rule or device for dealing with computerized information, the drafters concluded that discovery of "documents" stored in a computer database could be handled through the existing procedures. The steps outlined for obtaining documents and things from another party include: (a) a request; (b) an opportunity for the responding party to search for the documents; (c) an opportunity for the responding party to review the documents; (d) an opportunity for the responding party to prepare a written response or objection to the document requests; (e) an opportunity for the responding party to seek a protective order; (f) an opportunity for the requesting party to file a motion to compel; and (g) an opportunity for a party to respond to a motion to compel and support any objections.5 Disputes often arise, however, regarding the form of the information to be produced. It is often easier and more efficient to review documents in their computerized format, rather than to sift through boxes of documents. Consequently, a party will frequently request production of the material on computer tapes or disks as well as computer print-outs of the documents. In these cases, the requesting party may ask for the computer program and user manual necessary for retrieving and analyzing the computer database.

The responding party may be required to produce the data in electronic form, such as on a computer tape, disk, or CD, as well as in hard copy format. In other cases, the responding party has been required to produce and even to develop computer programs to extract and analyze the information contained in the computer database.6 Courts ordering this type of discovery stress the cost and time efficiency of it over more traditional document production.7

In addition to requests for production, parties may use interrogatories to obtain information regarding the computer system used to create, store, and retrieve documents in the database, the backup and storage procedures, the retention policies, and the organization and structure of the party's computer services department. As recognized by the Federal Judicial Center: In many instances it will be essential for the discovering party to know the underlying theory and the procedures employed in preparing and storing the machine-readable records. When this is true, litigants should be allowed to discover any material relating to the record holder's computer hardware, the programming techniques employed in connection with the relevant data, the principles governing the structure of the stored data, and the operation of the data processing system. When statistical analyses have been developed from more traditional records with the assistance of computer techniques, the underlying data used to compose the statistical computer input, the methods used to select, categorize, and evaluate the data for analysis, and all of the computer outputs normally are proper subjects for discovery.

Another discovery method is to request direct access to the responding party's computer system. In such cases, the requesting party seeks leave to run its own searches and queries for documents and information contained in the responding party's computer databases. These requests typically are granted only in cases in which the responding party has engaged in questionable discovery tactics, such as failing to produce relevant documents or disposing of relevant documents.9 III.

OBJECTIONS TO COMPUTER DATABASE DISCOVERY

A. Overbroad, Unduly Burdensome, Vague, and Duplicative In some cases, a party may make broad, general requests for production of all computer databases without tailoring the requests to those that pertain to the facts of the litigation. These requests are arguably improper in that the requesting party is merely conducting a fishing expedition by seeking all databases believed to possibly exist.

Parties frequently will request access to computer databases after the requesting party has produced paper copies of the documents contained in the database. Although many courts allow such discovery, an objection can be made, pursuant to Rule 26(b)(2)(i), that the discovery is "unreasonably cumulative or duplicative."lo

B. Attorney-Client Privilege

Litigation support databases and databases kept in the ordinary course of business may contain communications between the party and its counsel. Those communications are protected from discovery by Rule 26(b)( 1).

C. Work-Product Doctrine

The work-product doctrine protects from discovery computer databases created or maintained by a party or its representative or counsel in anticipation of litigation or for trial.'I Work product is protected from discovery unless the requesting party can show a substantial need for the requested materials or information and cannot obtain equivalent materials without undue hardship. Opinion work product contains counsel's mental impressions, judgments, conclusions, opinions, and legal theories. Unlike ordinary work product, opinion work product is afforded almost absolute protection.12

D. Trade Secret or Confidential Information

Pursuant to Rule 26(c)(7), a court may protect a "trade secret or other confidential research, development, or commercial information"'3 from disclosure or order that the information be revealed only in a designated manner. A trade secret is "any formula, pattern, device or compilation of information which is used in one's business, and which gives [a] person an opportunity to obtain an advantage over competitors who do not know or use it."14

Thus, if counsel or consultants for a party develop computer software for a litigation support system, the trade secret doctrine may protect the system from discovery, but not necessarily the data contained within the system. If the system is developed or used by a testifying expert, however, it is discoverable, regardless of its possible status as a trade secret or work product."

E. Objections to Direct Access to Computer System or Database

Rule 34(b) provides that "[t]he party upon whom the request is served shall serve a written response within 30 days after the service of the request."'6 Thus, litigants have an opportunity to undertake the inquiries necessary to determine whether a document should be produced. In many cases, a corporation's representatives must undertake factual research to determine whether the attorneyclient privilege or the work product doctrine or any trade secret or privacy concerns are implicated by the production.

Rule 34 allows a litigant to serve a request seeking items "either by individual item or by category," but requires the party to "describe each with reasonable particularity."'7 By requiring "reasonable particularity," this provision allows the responding party to determine exactly which documents are requested and to formulate an appropriate response. If a requesting party is entitled to conduct its own computer search on the responding party's databases, the requesting party would not be complying with the requirement that requests be set forth with "reasonable particularity." Instead, the requesting party could simply identify a database to be queried and begin unlimited searches of any nature.

Further, pursuant to Rule 34(b), a responding party can either "state, with respect to each item or category, that inspection and related activities will be permitted as requested" or state "the reasons for objection" to the request.ls The responding party also has the option under Rule 26(c) to make a motion for "any order which justice requires to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense. . . ."19 Conversely, the requesting party is authorized under Rule 37(a) to apply for an order compelling discovery. Thus, both parties are given an opportunity to present arguments to the trial court on discovery disputes.

Finally, if the requesting party is allowed to conduct its own searches of the responding party's computer databases, the responding party will be deprived of its constitutional right to counsel because such a procedure will eliminate the normal thirty-day response time provided by Rule 34. Parties need a reasonable response time in which to receive legal advice on the applicability of attorney-client privilege, work product doctrine, and other issues raised by discovery requests. While the courts have not addressed the right to counsel in the context of pretrial discovery, the concerns that underlie the right to counsel arguably apply to such a situation. IV.

ASSESSMENT OF COSTS OF PRODUCTION

When the production of computer databases, computer systems, or information regarding the use of the computer databases involves substantial expense, the responding party may seek to shift the burden and expense of production to the requesting party. According to the Advisory Committee on the Federal Rules of Civil Procedure:

The burden thus placed on respondent will vary from case to case, and the courts have ample power under Rule 26(c) to protect respondent against undue burden or expense, either by restricting discovery or requiring that the discovering party pay costs. Similarly, if the discovering party needs to check the electronic source itself, the court may protect respondent with respect to preservation of his records, confidentiality of nondiscoverable matters, and costs.20

With traditional discovery, responding parties often were able to shift the costs of production to the requesting party by merely making records available for inspection instead of producing copies of the responsive documents. Such a cost-shifting technique is typically impractical or undesired with computerized data, as it may mean providing the requesting party with direct access to the computer system. Accordingly, with respect to computer database discovery, a responding party must seek a protective order under Rule 26(c) for undue burden or expense in order to transfer the financial burden of production to the requesting party.

When a party chooses to use computer databases to store documents and other information, "[t]he normal and reasonable translation of the electronic data into a form usable by the discovering party should be the ordinary and foreseeable burden of a respondent in the absence of a showing of extraordinary hardship."21 Thus, the fact that production of computerized information will result in a substantial expense is not sufficient justification for imposing the production costs on the requesting party.

Courts may consider whether the amount of money involved is inordinate and excessive, whether the relative expense is greater for the requesting party as compared with the responding party, and whether the responding party will benefit in its case from producing the requested data.22 When the costs of production are caused by the responding party's choice of computer system and software, courts are less likely to shift the expense to the requesting party. v.

TYPES OF COMPUTER DATABASES

Whether a database is discoverable is determined in large part by the type of computerized data involved. Databases may contain computerized documents and information created and kept in the ordinary course of business; computerized data, calculations, or reports created or used by an expert in forming opinions; or computerized litigation support systems.

A. Computerized Databases Kept in the Ordinary Course of Business

A party's computerized business records, correspondence, communications, and reports that are relevant and likely to lead to the discovery of admissible evidence are discoverable under Rule 34, unless privileged.

Summaries of cases involving discovery requests for computerized data kept in the ordinary course of business are contained in Appendix A. Of the nineteen cases and orders reviewed, fifteen allowed the requested discovery. Of the three cases discussing the issues of costs, production cost was shifted to the requesting party in two cases.

B. Computer Databases Created or Used by Testifying Expert Witnesses Under Rule 26(a)(2)(B), a party must disclose "the data or other information considered by the [testifying expert] witness in forming opinions"23 to be expressed at trial. Thus, computer databases, calculations, or reports used or created by a party's expert in forming any conclusions or opinions are discoverable. That computerized information is discoverable even when the database was created by or at the direction of the party's counsel. In addition, the discovering party is entitled to "see the data put into the computer, the programs used to manipulate the data and produce the conclusions, and the theory or logic employed by those who planned and executed the experiment."24

Appendix B contains summaries of cases addressing the issue of the discovery of computerized data used by experts in forming opinions or conclusions. In all four of the cases reviewed, the requested discovery was allowed. Two courts transferred the entire cost of production to the requesting party, while one court required the requesting party to pay fifty percent of the costs.

C. Computerized Litigation Support Systems

Computerized litigation support systems are often created or used by both in-house and outside counsel to aide in the collection, selection, and organization of documents for discovery and trial preparation. Although not all the documents and information contained in a litigation support system may be privileged, the methods and thought processes used in indexing and selecting the documents may reveal the counsel's mental impressions, opinions, trial theories, and strategies. Different types of litigation support systems involve varying amounts of attorney input.

Some litigation support systems contain ordinary business documents, as well as additional documents used in preparation of litigation. These systems often have full-text search capabilities, requiring little attorney involvement in the creation and maintenance of the database. Other systems contain summaries of documents that are prepared by the party's attorneys or indices prioritizing and identifying documents. In summary systems, the party's attorney or someone under the attorney's supervision reviews all the documents, determines which documents are important or relevant to the case, and summarizes those documents. Only the summaries are contained in the computer database. In index systems, key words and phrase indices are entered into a computer database to aide in the search for information or documents. The more involvement the attorney has in the selection and organization of documents in the litigation support system, the more likely it is that the system will be protected from discovery.

Appendix C contains summaries of cases addressing the discovery of computerized litigation support systems. Of the nine cases reviewed, only three allowed the requested discovery. In all three of those cases, the court found either that the database did not contain opinion work product or allowed the responding party to redact the opinion work product portions before production of the database. VI.

CONCLUSION

The current trend of courts dealing with computer database discovery issues is to lean toward allowing the requested discovery. In twenty-two of the thirty-two cases and orders reviewed, the court granted the request for computer database discovery.

In many situations, it may be more convenient for all parties to produce and receive nonprivileged responsive discovery in computerized form. If a business intends to produce documents on computer disks or CDs, potentially privileged documents and communications should be stored in separate databases. Businesses should consider whether the computer system used to retrieve and manipulate the data is widely used or able to be converted by other computer systems and should incorporate the potential cost of producing computer manuals, software, and databases in its litigation budget. A document retention policy should be developed and followed. A party wishing to protect its databases from discovery should be prepared to assert and support objections to requests well in advance of any discovery dispute. Traditional objections to overbroad and unduly burdensome discovery requests should not be overlooked. The responding party should consider asking the court to order the requesting party to bear the cost of any computer database production. A party or counsel creating a litigation support system should address the work product doctrine issue in determining whether counsel will be closely involved in the selection and organization of documents in the database. Further, counsel must keep in mind that databases provided to testifying experts will typically be discoverable, even if the databases contain work product. Regardless of the type of data involved, discovery issues should be a primary consideration during the development of the computer database.

1FED. R. CIV. P. 34(a)(1).

2FED. R. CIV. P. 34, Advisory Committee's Notes.

3Statement of Mr. Morton, Minutes of Advisory Committee Meeting, May 20 to May 21, 1966.

4See, e.g., 8 CHARLES A. WRIGHT & ARTHUR R. MILLER, FEDERAL PRACTICE AND PROCEDURE 2218 (1993 Supp.) ("The rule now clearly allows discovery of information even though the information is in a computer. But this does not mean that information in a computer is for that reason necessarily discoverable.").

5FED. R. CIV. P. 26, 34, and 37.

6See, e.g., National Union Elec. Corp. v. Matsushita Elec. Indus. Co., 494 F. Supp. 1257 (E.D.Pa. 1980).

7Id.

8Bills v. Kennecott Corp., 108 F.R.D. 459, 461 (D. Utah 1985) (citing MANUAL FOR COMPLEX LITIGATION, 2.715, at 75 (1977)).

9See Gates Rubber Co. v. Bando Chem. Indus., Ltd., 167 F.R.D. 90 (D. Colo. 1996) (court allowed requesting party to enter offices of responding party to search files and computer records where evidence was presented that responding party was destroying documents and erasing computer files).

10FED. R. CIV. P. 26(b)(2)(i).

"FED. R. CIV. P. 26(b)(3).

12Id. (courts "shall protect against disclosure" of opinion work product). 13FED. R. CIV. P. 26(c)(7). '"Black's Law Dictionary 139 (6th ed. 1990).

'See, e.g., Fauteck v. Montgomery Ward & Co., 91 F.R.D. 393 (N.D. Ill. 1980)(computer database created by defendant's attorneys discoverable when used as foundation for expert testimony).

'6FED. R. CIV. P. 34(b).

17Id.

18Id.

19FED. R. CIV. P. 26(c)

2FED. R. CIV. P. 34, Advisory Committee's Notes.

2'In re Brand Name Prescription Drugs Antitrust Litig., 1995 WL 360526, at *2 (N.D. III. June 15, 1995) (citing Daewoo Elec. Co. v. United States, 650 F. Supp. 1003, 1006 (Ct. Int'l Trade 1986)).

22Bills v. Kennecott Corp., 108 F.R.D. 459, 464 (D. Utah 1985).

23 ,ED. R. CIV. P. 26(a)(2)(B).

2"City of Cleveland v. Cleveland Elec. Illuminating Co., 538 F. Supp. 1257, 1266 (N.D. Ohio 1980) (citing 8 CHARLES A. WRIGHT & ARTHUR R. MILLER, FEDERAL PRACTICE AND PROCEDURE 2218).

John F. Murphy is a partner at Shook, Hardy & Bacon in Kansas City, Missouri, and is Chairman of the firm's General Litigation Division. He has 18 years of experience in managing and trying significant lawsuits. Mr. Murphy received a B.A. in Political Science in 1976, magna cum laude, Phi Beta Kappa,from the University of Connecticut. He received his J.D. in 1979, cum laude, from Washington & Lee University, where he was a member of the Washington & Lee University Law Review and National Moot Court Team. Throughout the course of his career, Mr. Murphy has specialized in national products liability litigation.

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