What Lies Beneath
Native Format Production and Discovery of Metadata in Federal Court
By Elliot Paul Anderson

This hidden information, often referred to as “metadata,” can be problematic from a production standpoint.1 Metadata does not normally appear on a printed page, but nonetheless can reveal information concerning the authorship of the document, previous versions and revisions to the document, and comments embedded in the text. This hidden data may be privileged, confidential or simply irrelevant, and reviewing it prior to production can be costly and time-consuming. And metadata is not the only concern with native format production. Native documents can be difficult, if not impossible, to redact when privileged material is present. Moreover, native files are easily opened and modified, thus creating a greater hazard of evidence tampering. These and other difficulties explain why a litigant may prefer to convert native documents to images before producing them.

Despite these concerns, federal courts have been willing to order native format production on a regular basis. Under the amended Federal Rules of Civil Procedure, a party may request production of ESI in a particular form, including native format.2 This request is not dispositive, but courts do have the authority to order native format production when they are convinced it is necessary. Moreover, some courts interpret Rule 34(b)(i) to mean that a party producing electronic documents “as they are kept in the usual course of business” must provide them in native format, with metadata intact.3

Under the right circumstances, a party may be able to avoid native format production, but litigants should be aware that boilerplate objections are largely ineffective. When a court denies a request to order native format discovery, it is almost always in response to a timely, well-founded objection that leaves room for a reasonable alternative. Following are some of the more common objections to native format production, along with various rulings on those objections.

OBJECTIONS TO NATIVE FORMAT PRODUCTION

Privilege Review and Redaction

Producing parties commonly argue that it would be unduly burdensome, if not impossible, to review all of the metadata in a set of native files and redact privileged information. At least one court has agreed in principle, stating, “Most metadata is of limited evidentiary value, and reviewing it can waste litigation resources.”4 Nevertheless, the facts vary from case to case, and the evidentiary value of native documents may outweigh the burden of privilege review.

Privilege review and redaction can be particularly difficult where e-mails are produced in a native .pst format, as an “entire mailbox.”5 While a printed e-mail can easily be redacted by covering up privileged content, at least two courts have been sympathetic to the argument that it would be impossible to separate out individual documents (or portions of documents) from an integrated .pst mailbox.6

Despite these difficulties, some courts have ordered native format e-mail production. The court in In re Verisign, Inc. Securities Litigation recognized that it may be difficult to redact information from a .pst file, but the court was “not convinced that the responsive documents are so replete with privilege redactions that such a task would transcend all reasonableness.”7

Security and Tamper-Proofing

Another concern with native format production is the possibility that a file may be tampered with. At least one court has ordered the production of electronic documents as images, describing this as “the most secure format” for production.8 According to the court in In re Priceline.com Securities Litigation, numbered image files were the best way to guard against alteration of documents (and any accusation of alteration). In so ruling, the court noted that exceptions would be made if native format production was necessary to “view or comprehend the information in the file.”

Other courts, however, have reached different conclusions. One court rejected the argument that image files were necessary to guard against evidence tampering, stating that “both parties will be double checking the authenticity of any documents relied upon by the other side.”9 And there appear to be other means of securing electronic documents against alteration, such as the use of an algorithm to assign each document a unique digital signature, called a “hash mark.” Under this system, if the underlying document is altered in any way, the new document’s “hash mark” will differ from the original.10

Reasonably Usable Form

As mentioned above, some courts resolve the question of production format in the context of Rule 34(b)(i), which states, “a party who produces documents for inspection shall produce them as they are kept in the usual course of business or shall organize and label them to correspond with the categories in the request.” At least one court has interpreted “as they are kept in the usual course of business” to mean native format.11 Under this reasoning, a party must either label its production documents to correspond to the requests, or must produce electronic documents in their native format.12

Other courts, however, address the question of production format in terms of Rule 34(b)(ii), which states that “if a request does not specify the form… a responding party must produce the information in a form or forms in which it is ordinarily maintained or in a form or forms that are reasonably usable…” (emphasis added).13 Under this approach, a producing party need not provide ESI in native format, so long as the alternative format is “reasonably useable.”

The advisory committee notes to Rule 34 support the latter approach, explaining that “The rule does not require a party to produce electronically stored information in the form in which it is ordinarily maintained, as long as it is produced in a reasonably usable form.”14 A producing party should be careful, though, to demonstrate that the alternative form is not significantly inferior to a native file. For example, if a document in its native form is searchable, the production format should not “significantly degrade” the searchability feature.15

It bears noting that if parties cannot agree on a production format, the court has great latitude to order a compromise format of its own choosing. As explained in the advisory committee’s note to Rule 34, [T]he court is not limited to the forms initially chosen by the requesting party, stated by the responding party, or specified in this rule …” In at least one case the court ordered the production of electronic documents in an imaged format, accompanied by “searchable metadata databases.”16

Presumption Against Production of Metadata

Finally, at least two courts have recognized an emerging, weak presumption against the production of metadata. The idea seems to originate with the Sedona Principles for Electronic Document Production, which provide, in part, that “[u]nless it is material to resolving the dispute, there is no obligation to preserve and produce metadata absent agreement of the parties or order of the court.”17 Based on this principle, the court in Williams v. Sprint/United Management Co. observed that “emerging standards of electronic discovery appear to articulate a general presumption against the production of metadata, but provide a clear caveat when the producing party is aware or should be reasonably aware that particular metadata is relevant to the dispute.”18 Despite this observation, the Williams court issued a blanket ruling that an order to produce documents “as maintained in the ordinary course of business” would include metadata production, unless there was a timely objection, a protective order, or an agreement between the parties.

In another opinion, Wyeth v. Impax Labs, Inc., the court noted the same emerging presumption against the production of metadata.19 Additionally, the Wyeth court applied the District of Delaware’s Default Standards for Discovery of Electronic Documents, which require parties to produce electronic documents as image files if they cannot agree on a different format. In light of the emerging presumption and the local production rules, the Wyeth court did not order native format production, but noted that it could do so later if the requesting party demonstrated a “particularized need.”

CONCLUSION

Whether or not a court will order native format production depends heavily on the facts of the case: the severity of the requesting party’s need, the strength of the producing party’s interest, and the availability of reasonable alternatives. In some cases, native format discovery may be essential to the merits of the litigation. In other cases a party may be able to avoid native format production by making a well-reasoned objection and providing an alternative format that is reasonably usable by the opposing side.

1. See generally ABA Comm. on Ethics and Prof’l Responsibility, Formal Op. 06-442 (2006) (“Review and Use of Metadata”).
2. Fed. R. Civ. P. 34(b).
3. See, e.g., In re Verisign, Inc. Sec. Lit., No. C-02-02270, 2004 WL 2445243 (N.D. Cal. March 10, 2004).
4. Wyeth v. Impax Labs., Inc., No. 06-222, 2006 WL 3091331, at *2 (D. Del. Oct. 26, 2006) (citing Williams v. Sprint/United Mgmt. Co., 230 F.R.D. 640, 651 (D. Kan. 2005)).
5. See CP Solutions PTE, Ltd. v. Gen. Elec. Co., No. 3:04-CV-2150, 2006 WL 1272615, at *4 (D. Conn. Feb. 6, 2006).
6. Id; see also Williams v. Sprint/United Mgmt. Co., No. 03-2200, 2006 WL 3691604 at *6 - *7 (D. Kan. Dec. 12, 2006) (recognizing that it may be “technologically impossible to redact the actual text of e-mails while maintaining them in native format,” and denying plaintiff’s request for native-format production).
7. 2004 WL 2445243, at *3; see also Hagenbuch v. 3B6 Sistemi Elettronici Industriali, No. 04-C-3109, 2006 WL 665005 (N.D. Ill. March 8, 2006) (ordering native production of .pst files).
8. In re Priceline.com Sec. Lit., 233 F.R.D. 88, 91 (D. Conn. 2005).
9. Hagenbuch, 2006 WL 665005 at *4.
10. See generally Williams, 230 F.R.D. at 655.
11. Verisign, 2004 WL 2445243 at *2.
12. Id. Arguably, section (i) of Rule 34(b) concerns organization of data more than it does format, in which case section (ii) (which specifically addresses format) is the better rule for deciding whether native format production is appropriate.
13. See In re Payment Card Interchange Fee and Merch. Disc. Antitrust Lit., No. MD-05-1720, 2007 WL 121426, at *4 (E.D.N.Y. Jan. 12, 2007).
14. Fed. R. Civ. P. 34 advisory committee’s note; see also CP Solutions, 2006 WL 1272615 at *3 (holding that .tiff images of email files were acceptable under Rule 34, so long as they were in a “readable, usable format”).
15. Payment Card Interchange, 2007 WL 121426 at *4 (quoting advisory committee notes to Rule 34); see also Hagenbuch, 2006 WL 665005 at *2 (granting motion for native format production, based upon plaintiff’s claims that .tiff images muddled the organization of documents and impeded searchability).
16. Priceline, 233 F.R.D. at 91.
17. The Sedona Conference; The Sedona Principles: Best Practices Recommendations & Principles for Addressing Electronic Document Production (Jonathan M. Redgrave et al. eds., 2005), Principle 12, quoted in Williams, 230 F.R.D. at 650.
18. Williams, 230 F.R.D. at 652.
19. Wyeth, 2006 WL 3091331 at *2 (citing Williams, 230 F.R.D. at 652).

LIST OF CASES

This is a sampling of opinions, as of the writing of this article, that discuss native format or metadata production. The list is divided into cases generally “for” and “against” native format production, with the most recent decisions at the top. There is also a third category of opinions, illustrating the use of metadata at trial.

CASES “FOR” NATIVE FORMAT OR METADATA PRODUCTION

In re Payment Card Interchange Fee and Merch. Disc. Antitrust Lit. , No. MD-05-1720, 2007 WL 121426 (E.D.N.Y. Jan. 12, 2007)

• A producing party may provide ESI as maintained in the ordinary course of business, or in a form “reasonably usable,” but per advisory committee’s note, the alternate format cannot “significantly degrade” searchability, if native format is otherwise searchable.
• Here, conversion of native files to .tiff or .pdf format and use of OCR would degrade searchability. Court indicates it likely would grant a motion to compel production in native format, if one were made.

Palgut v. City of Colo. Springs , No. 06-CV-01142, 2006 WL 3483442 (D. Colo. Nov. 29, 2006)

• Discovery order providing native format is the default form of production, though the producing party has the right to object.

United Med. Supply Co. v. United States, 73 Fed. Cl. 35 (2006)

• Preservation order defining “documents, data, and tangible things” to include metadata.

In re NYSE Specialists Sec. Lit., No. 03-CV-8246, 2006 WL 1704447 (S.D.N.Y. June 14, 2006)

• Production order specifying that hard copy documents are to be produced in .tiff format, and ESI is to be produced in native format, with metadata intact.

Rodriguez v. City of Fresno, No. 1:05-CV-1017, 2006 WL 903675 (E.D. Cal. Apr. 7, 2006)

• Order requiring city to gather and produce requested metadata. City estimated it would take eight hours to do so, and court found this was not an unreasonable burden.

Hagenbuch v. 3B6 Sistemi Elettronici Industriali, No. 04-C3109, 2006 WL 665005 (N.D. Ill. Mar. 8, 2006)

• Production of ESI (including email) in .tiff format was unacceptable due to lack of metadata, impaired search abilities, and muddled organization (images made it difficult to tell where one document ends and another begins).
• Metadata meets the discovery relevance standard, especially in this patent infringement case, where plaintiff needed to prove what information defendant had, and when.
• Anti-tampering concerns and difficulty in applying Bates numbers to native files were insufficient to justify production in .tiff format.

Nova Measuring Instruments, Ltd. v. Nanometrics, Inc., 417 F. Supp. 2d 1121 (N.D. Cal. 2006)

• Discovery order in patent infringement action. Production must be in native format, with metadata intact.

Williams v. Sprint/United Mgmt. Co., 230 F.R.D. 640 (D. Kan. 2005)

• Blanket ruling that a court order to produce documents as maintained in the “ordinary course of business” includes metadata production, absent a timely objection, protective order, or agreement between the parties.
• Cites Sedona presumption against discovery of metadata, but then requires production of metadata.
• Holds that producing party may not “lock” produced spreadsheets to prevent tampering, but rather should use alternative authentication method, such as algorithmic “hash marks.”

Jicarilla Apache Nation v. United States, 60 Fed. Cl. 413 (2004)

• Confidentiality and protective order defining “records” to include metadata.

Pueblo of Laguna v. United States, 60 Fed. Cl. 133 (2004)

• Preservation order defining “documents, data, and tangible things” to include metadata

In re Verisign, Inc. Sec. Lit., No. 02-02270, 2004 WL 2445243 (Mar. 10, 2004)

• Magistrate judge had ordered production of emails in native .pst format, finding no undue burden. District court reviewed this finding of fact for clear error, and found none, despite producing party’s objections concerning difficulty of numbering documents and conducting privilege review/redaction in native format.

CASES “AGAINST” NATIVE FORMAT OR METADATA PRODUCTION

Williams v. Sprint/United Mgmt. Co., No. 03-2200, 2006 WL 3691604 (D. Kan. Dec. 12, 2006)

• Though defendant had already been ordered to produce spreadsheets in native format, court would not order production of emails in native format citing: (a) plaintiff’s waiver by already agreeing to accept non-native e-mails, (b) possible privilege/redaction difficulties with native e-mail files, and (c) fact that defendant had already produced emails in .tiff format, and Rule 34(b)(iii) precludes duplicate production.

Wyeth v. Impax Labs, Inc., No. 06-222, 2006 WL 3091331 (D. Del. Oct. 26, 2006)

• Notes an emerging presumption against production of metadata, absent clear need or relevance (but producing party must produce metadata if it knows or should know it is relevant) - Citing Williams, 230 F.R.D. 640.
• Cites D. Del. rule for electronic discovery, establishing that default production format is .tiff or .pdf, unless parties agree otherwise (or a special need for native format is shown).
• “Most metadata is of limited evidentiary value, and reviewing it can waste litigation resources.”

CP Solutions PTE, Ltd. v. Gen. Elec. Co., No. 3:04-CV-2150, 2006 WL 1272615 (D. Conn. Feb. 6, 2006)

• E-mails need not be produced in native .pst format, due to privilege/redaction concerns (subject to further exploration by parties).
• Printouts of emails sufficient, so long as emails and attachments can be matched up.
• Image files of e-mails are “reasonably usable,” as required by Rule 34(a).
• Producing party need not “organize and label” documents to requests, so long as they are produced as maintained in the ordinary course of business (Rule 34(b)(i)). Image files meet this criteria.

In re Priceline.com Sec. Lit., 233 F.R.D. 88 (D. Conn. 2005)

• Interesting compromise situation. Generally speaking, production ordered in .tiff or .pdf format, with searchable metadata databases.
• Image-format production provides for ease of identification (Bates numbering) and protects against alteration of documents (and accusations thereof).
• Defendant (producing party) required to retain native format documents through duration of litigation.

CASES DETAILING USE OF METADATA AT TRIAL

Williams v. Sprint/United Mgmt. Co., No. 03-2200, 2007 WL 38397 (D. Kan. Jan. 5, 2007)

• Metadata used to confirm that attorney authored document, and privilege applied (though court ultimately found it had been waived).

PML N. Am., LLC v. Hartford Underwriters Ins. Co., No. 05-CV-70404, 2006 WL. 3759914 (E.D. Mich. Dec. 20, 2006)

• Metadata proved defendant accessed backup folders, which he had later claimed never existed.

Williams v. Sprint/United Mgmt. Co., No. 03-2200, 2006 WL 2631938 (D. Kan. Sep. 13, 2006)

• Metadata indicating creation date of spreadsheet did not prove creation date of individual worksheets, or “tabs,” on spreadsheet.

Plasse v. Tyco Elecs. Corp., 448 F. Supp. 2d 302 (D. Mass. 2006)

• Employment action. Metadata used to prove plaintiff’s extensive, willful spoliation of evidence that he had falsified his qualifications on his resume. Case dismissed.
• Very good discussion of forensic techniques for the recovery of “deleted” info.

Krumweide v. Brighton Assocs. , No. 05-C-3003, 2006 WL 1308629 (N.D. Ill. May 8, 2006)

• Employment action. Metadata proves plaintiff’s deletion of relevant files. Default judgment and attorneys’ fees for defendant employer.

Michael J. v. Derry Tp. Indep. Sch. Dist., No. 103-CV-1104, 2006 WL 148882 (M.D. Pa. Jan 19, 2006)

• Metadata indicating creation date of IEP did not prove that plan was written prior to hearing, especially because metadata showed post-hearing modification date.

Turner v. Resort Condos. Int’l , No. 1:03-CV-2025, 2006 WL 1990379 (S.D. Ind. July 13, 2006)

• Employment action. Defendant employer used metadata to prove plaintiff was on RIF list prior to advising she was pregnant.

About the Author

Elliot Paul Anderson is an associate with the Tulsa offices of Crowe & Dunlevy. His practice focuses on business and commercial litigation, and more recently, electronic discovery under the amended Federal Rules of Civil Procedure. He earned his B.A. from OU and his J.D. from Pepperdine University School of Law.

What Lies Beneath
Native Format Production and Discovery of Metadata in Federal Court
Published 78 OBJ 999 (April 14, 2007)