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Publications & Articles
October 2004
By: Timothy Q. Delaney and Stephen C. Smith
CIPerati

Gathering Evidence in the Digital Age

CIPerati, a Cyberspace and IP Law Newsletter
A publication of the American Bar Association, Business Law Section, Cyberspace Committee, IP Subcommittee
Vol. 1, Issue 4, October 2004
(Printed in abridged version without footnotes)

I. Introduction
The Age of The Computer has changed the way businesses around the world conduct their daily transactions. Almost everything they do will find its way to the computer, from a sales transaction to the purchase of paper clips. Nothing misses the opportunity to be logged into the digital world of ones and zeroes. Almost all of the documents that a business creates begin life in a computer. Many of these electronic creations never make it to paper. They stay in an electronic form and some, if not all, of the data is eventually archived.

But what does this mean to an attorney whose client needs that information for a successful outcome in litigation? It means a round of discovery that is nightmarish for one who is unprepared and for sure, expensive and time consuming not only for the attorney but especially for the client and experts who will be hired to sift and sort out the data. It is this digital material that will likely determine the outcome, and very often, will allow the matter to settle before the dispute arrives in the courtroom.

This is not the only aspect of the digital age that has affected litigation. Presently, some courtrooms are wired to present evidence to the jury on monitors via a computer. Witnesses can point and color the objects of interest on the display, and jurors are comfortable receiving the information in this manner. After all, most jurors have been tutored in receiving colorful visual displays of information through USAToday® and CNN® and even the use of a computer for accessing the Internet is well known to most of them. The Federal Rules of Evidence allow for the court to have information presented in this manner if it is authenticated properly. In order for attorneys to appear credible to juries, it is very important for them to become accustomed to the tools of technology and use them effectively when presenting their case.

Attorneys who ignore the digital age do so only at their and their client's peril. In order to remain competitive, clients took the leap into the digital age, so they certainly expect their attorney to take that leap with them. We can be sure opposing counsel will have taken that leap. For those of us who have not fully made that transition, this paper is intended to provide assistance.

The first goal of this article is to provide some tools to gather digital evidence about the opposing party and their attorneys through public electronic means. The second goal is to help one interpret and understand how electronic data may be gathered and stored so that it can be readily available for trial. In doing so, it is hoped that a third goal will be had, that of winning the client's case and preserving the client's resources while doing so.

This paper is divided into four sections. The first section discusses resources for investigating your opponent; the second section discusses what electronic databases to pursue during discovery; the third section discusses technology and depositions, and the fourth covers the advantages of scanning and digitizing documents.

II. Investigating Your Opponent
Who is your opponent and what has he done? You know what your client has said; it is now advisable to investigate your opponent's background as part of the research phase of your case. Also, if you know who represents the opposition, you might be half-way to understanding the tactics of the attorney. If you do not know the attorney, there are many tools you may use to get the necessary background information.

The Internet is a wonderful tool for digging into one's background. It is also an exasperating tool because the information in some sources is lacking. Regardless, it is still a good tool to begin a search, and there are many sites that will provide the accuracy that an attorney requires. Of course, there are sites that require a subscription to access information, and these sites usually provide the most accurate information. But there are many free sites that an attorney may use, thus saving the client money.

A. PACER and RACER.
In recent years, the federal courts instituted a system whereby court information is available to the public electronically.1 Each district court having the capability provides a link on its webpage which is called Public Access to Court Electronic Documents or PACER. This link will access the court's docket. In order to download pages from this site, an account must be established, but the good news is that for a download, the cost is only $0.07 per page.

Within PACER is the Real-time Access to Court Electronic Records (RACER). RACER further provides access to the pleadings, motions or other memoranda that the parties may file with the court. These may also be downloaded at $0.07 per page once your account is established. A search on the PACER system can be tailored by party name, case name, attorneys or by U.S. party information. This site can be very effective for finding out about the tactics of opposing counsel. It is also informative for finding out how the presiding judge will rule when faced with given situations.

There are two disadvantages to using the PACER system. The first is that not all of the district courts are using the system yet. It is anticipated that the district courts that have not implemented the system will participate by 2005. The second disadvantage of the system is that they are not in real-time. It can take twenty-four to forty-eight hours or more for the documents to be scanned into the system once they are filed. This should not be a concern if the need is for background information. However, as the federal district courts move to electronic filing, the documents should be available sooner.

B. Lexis and Westlaw.
Well-known to all of us in the legal profession are the two largest sources for doing legal on-line research, Lexis® and Westlaw®. Both Lexis® and Westlaw® have features that make the individual services popular with researchers so that the researchers develop preferences for one or the other. Although some will find it easier to use one or the other, either service provides thorough coverage, but the use of both will complement and complete one's research. Whichever one is used, both continue to expand their coverage and content in order to provide a more complete search. Both give vast coverage to the news and provide links to the major newspapers and newswire services. As their capabilities for conducting a more complete search expand, so does the expense.

For those without the resources and large budgets, both operate free access services with a limited database of information as abbreviated versions of the full-blown service. These services are especially important for the small office and for the client that does not have a budget for large-scale searches. LexisONE®, provided by LexisNexis™, and Findlaw, a service of the West/Thompson Group are very good resources for finding basic legal information quickly.2 The available case law generally extends back to 1998. Cite checks of the available case law and statutes can be accomplished through these resources for a nominal fee once an account is established. These sources are limited, but provide linking to the more powerful research tools when that capability is required.

Another tool, Courtlink®, a service provided by Lexis®, is another way to check the court databases. It pulls information from the PACER and RACER links on the federal district court databases and searches can be conducted across all the court dockets by keying to parties and attorneys. Further, it also links to cases or to other documents that are cited within the document. The price for downloading is $0.25 per page and there is an upfront fee for the search. Although more expensive than the PACER and RACER websites, the higher price covers the linking capability not provided by the court website and it is certainly worth the cost when searching through the dockets of several district courts.

Profiler™, a service of Westlaw®, allows for the searches of attorneys, judges and even expert witnesses and provides information about their cases. It also provides a listing of any articles that they have authored. The major disadvantage of the service is that you do pay an upfront charge for the search, even if the search comes back with no information about the targeted individual. However, the cost of a successful search may more than offset the time a paralegal or attorney spends searching the individual databases.

C. Government Websites.
Once a connection to the Internet is made through an Internet Service Provider, one can gain access to individual state and the federal government websites. Government websites provide links to agencies where the agencies make information for public dissemination available. For example, public information about people who register with the government may be accessed. This includes attorneys whose status may be found through these websites.

Although manually accessing each of the agencies is time-consuming, there are alternative methods for accessing the needed information. As mentioned earlier, both Lexis® and Westlaw® provide an efficient search through all of the databases at once and can be a good starting point for any such search. The user pays a fee for these powerful search tools, however, the costs are offset by time savings.

If an extensive search is not necessary, free portals such as Yahoo!® and Google™ provide links to the government sites when the uniform resource locator ("URL") identifier is not known. For instance, to find out whether a business is registered or to find the agent of the business who will accept service of process, one may access the Secretary of State's website through the state government's website. Often the search engines provide a direct link to the Secretary of State. By browsing through the Secretary of State's site, one will find the business registration site and will be able to access the available business information.3 The disadvantage of proceeding through the state's website is that not all states provide this information through their website, in which case, you will have to call for the information. States have priorities and many do not have the resources to provide this information electronically to the public at large. Also, the laws vary from state to state pertaining to the information provided on the website. In order to comply with privacy acts, it is unlikely some of the information will ever make its way into public view.

D. Business Websites.
These days almost all companies from big to small maintain a website. Corporate websites provide varying types of information about the company. Such websites typically provide commercial information about the company and the products it sells, even including products sold by small divisions. The website may tie the structure of the company together so that the decision-making level of the company may be determined. Also, pertinent information about an infringing product may be found. Since the website is a sales tool, the salient features of the product might be discussed, and this could be especially important if those features are denied at a later time.

Many corporate websites include news releases that the company uses to disclose product introductions and realignment of the company managerial structure, investor links that provide investors with important information about the finances of the company, and contact information about receiving specific information required by the Securities and Exchange Commission. Some companies provide links to their research and development department. Even information about publications that the research scientists have published can be available. The larger the company, the more information there will likely be on the website.

E. Other Public Electronic Sources.
A variety of financial sites provide free information that has been released by a company. Yahoo!® provides this information in the finance page of their website. Not only does it contain the current market data, but it combines a lot of the news stories and information about the company. For example, just like many other sites such as CNNMoney.com4 and MSNMoney.com,5 and some newspapers' websites, Yahoo® will provide the news along with the current stock price for each company requested. These sites also list links to the latest stock prices, charts and trends of where the company's stock is heading along with analysts' ratings of the stock. In a few cases, even the names of the individuals and the institutions holding the largest portions of the company's stock are disclosed.

Not often, but sometimes an important source for company information is found in a chatroom belonging to the financial news sites where people discuss their impressions of the company. Usually access to the chatroom is on the page displaying the stock price and investors enter their comments about the company. Often it is just the public or investors who participate, but employees will join in and sometimes discuss company business. They use aliases rather than their real names, however when they register with the portal site to create their aliases, they had to register using their real names. Many of the individuals believe that they can remain anonymous and they give out information freely, not realizing that their true identity can be discovered. It is important to realize that some information on the message board may be very important to your client's case and it should not be overlooked in the discovery phase. When necessary, the real identity of the aliases can be obtained.

Newsgroups, also referred to as web logs or Blogs, can also a valuable source of information. Newsgroups are posting of messages from a variety of people. Questions are posed and comments are provided. Newsgroups may be found on Yahoo!® or American Online (AOL®) and some may be found on private websites. Finding one that relates to an opponent should be reviewed and monitored for possible useful leads.

Finally, search engines such as Google™ and Yahoo!® should never be overlooked when conducting a search for a corporation or an individual. All types of news will come flooding in and the requestor may spend hours sorting through much of it, but these search engines can provide a very good start to any search.

III. Pursuing Electronic Databases
Although reviewing thousands of paper documents is a difficult task in the discovery process, the real challenges occur when trying to figure out what electronic databases are needed and where they are located. Reviewing the electronic files can also be complicated as it is difficult sometimes to know what software was used to create them. How one goes about determining the authenticity of those files and whether they have been altered can also be a daunting task for the uninitiated. Other problems surface when we know what documents we need, but find that they no longer exist because they were deleted or destroyed, sometimes as part of a retention program that was implemented but not followed until the litigation began.

A. Notification.
One of the first things an attorney should do when approaching discovery is notify opposing counsel of the intent to request electronic data files and to remind counsel that the following should be preserved: e-mail and the information about e-mail; files created by word processing programs; spreadsheet data and the software that created that data; network activity logs as well as the audit logs; electronic calendars; and telephone logs.6 The notice should make clear that all potentially discoverable material, which should be specifically described, should not be deleted or modified; that no new software should be implemented on the PC's; de-fragmentation programs should not be run; and that back-ups should be maintained.7 Even if a computer or an electronic storage medium device should break, it should not be discarded.8 In today's world of telecommuting, one cannot forget about the key employee's home computer either.9 It is a very important tool for both the employer and the employee, and it may be critically important to your case as well.

Once the letter is sent, you should expect a letter from opposing counsel requesting the same of you as well as a listing of the types of documents that should be saved. You should prepare your client in advance, informing him of his responsibilities. The list from above provides a good checklist. However, if the case is small or the burden would fall unequally upon your client, you may chose to not pursue an aggressive strategy on electronic discovery.

You should also brief your client on proper retention program procedures that should be in place well in advance of any specific litigation. Litigation is the wrong time to start formulating a global plan. A properly executed retention program will provide for the automatic removal of old files in a timely and regular fashion to reduce costs of saving materials that no longer serve a valid business purpose. The program must provide for the orderly suspension of regular document destruction policies to the extent necessary to preserve relevant information when litigation occurs.10

Non-compliance with your opponent's requests for preservation has its pitfalls. A lack of cooperation or compliance, even when the task seems unduly burdensome, may decide the outcome of the case.11 Many cases have been won or lost because of the continuing destruction of documents.12 Therefore, being proactive in dealing with the electronic documentation is the best approach, especially prior to litigation, but also during the discovery phase of litigation. When you and your client can show the court that you have been proactive in managing the electronic data, it will be easier for the court to grant your request for protective orders when the opposition is unduly burdening your client with demands or is requesting privileged information. The court looks more favorably upon your motions if it is evident that your client has taken the time to be organized and straightforward with the data and the court.

It is important for you to understand your client's computer systems. It is equally important that you understand your opponent's as well. Unless you possess the expertise, it is advisable to hire an expert who understands those systems. The expert will be able to identify the search techniques that will efficiently comb through the data files and quickly find the information that is key to your case. In addition, the expert will be able to help you formulate the questions for the oral or written depositions of your opponent's system manager.13

B. Electronic Mail ("E-Mail").
As the discovery process progresses, there will likely be many e-mail messages that are at issue in the case. E-mail is discoverable, but it can be afforded the protection of attorney-client privilege when the e-mail message is a communication between a client and a lawyer with the purpose for communicating legal advice.14 Waiver of the privilege is applicable in the same situations where a verbal or written (not e-mail) communication would no longer be afforded privilege, such as the disclosure to a third person. The retransmission of the e-mail communication between the attorney and the client to other employees will not jeopardize the privilege if the communication was for legal advice and the advice is passed to other employees who are directly concerned with the legal matter (i.e., they have a need to know).15

The greatest worry about e-mail generally is that it is a spur of the moment communication with little thought and often includes a smart remark or other off-hand comment. If someone was writing a formal letter, that same comment would never appear. Since the send button is so easy to hit, comments that might be said in a conversation are now put into writing. These comments might have tremendous evidentiary value, but they are very difficult to find. Such comments occur in a reply to a message or are contained in a string of messages with an entirely different subject heading. A search for a comment like this is time-consuming, but cannot be overlooked because of its importance to your case.

E-mail searches, in general, are time-consuming and expensive and parties often try to pass the cost of production to the other side. It is generally understood that the producing party bears the cost.16 However, where the cost is unduly burdensome, it might be shifted when the outcome of the production is very uncertain and is so costly that the producing party would be extremely disadvantaged.17 If cost shifting does occur, it is only because the producing party was able to meet a very high burden of proof that the shift should occur in the interest of justice.18

C. Word Processing
Another very important area of "e-discovery" involves the production of electronic documents that are created with word processing software. The origin of these documents may sometimes be disavowed or the documents may be different because they have been altered. Most word processing documents have a "properties" button that will disclose the author or who the software was registered to when the document was first authored.19 The properties button in the word processors will also disclose, generally, when the document was edited as well as the time taken to do the editing and the date the alteration was made.20 Even if the author cannot be identified, at least the purchaser who registered the software with the manufacturer can be determined. This is often referred to as metadata.21

Another way to determine if a document was altered is by comparison to a back-up file. Sometimes the back-up file may be found on the hard drive as the computer often backs-up documents so that they may be retrieved in the event of a system failure or power failure. The computer will recover the portions of the document that were saved upon restart.

D. Market Data
Information of this type is electronically stored and analyzed in order for a business to evaluate the sales of their goods in differentiated markets throughout the world. The data may consist of bar code data purchased from ACNielsen or Information Resources, Inc. (IRI), two market research companies. The data can be massaged and analyzed to find out what the impact of a new product has on their existing sales of products, or how an improvement in the product affected current sales, and in what regions or territories those affects took place.

For the patent attorney, this information can be useful in determining damages for an infringing product that has been introduced to the marketplace. The reduction in sales or even an increase in sales because of the entry of another's product can be determined. Often experts are available to help sort through the data to understand what the impacts are to a company's bottom line.

Lost profits can be established from these records. As you lose market share the analysis will show you how much you lost in product sales. In the unlikely event that sales were increased, a reasonable royalty rate might be established. Obtaining such material in discovery may be critical to the determination of damages.

E. Financial Information
Electronic data available from the accounting department may also be critical evidence, includes expenditures involving the payment of money for the obtaining a patent, the research that was performed in reducing the subject matter to practice; and the expenditures for further implementing the production of the invention. All are considered damages in a patent infringement case. These records are discoverable by the other side as well. As you establish your damages or as your opposition establishes damages, these records become important to verify the exact amount of damages for the patent infringement. Again, you will need an expert to examine the records and provide an analysis of the data.

F. Chain of Custody
Once the e-documents are received, make sure there is a solid chain of custody. This is equally important for not just the documents received but also for the documents within your client's control. There must be someone accountable for the custody of the documents at all times so that there is no unauthorized handling of the files. The documents need to be authenticated for trial and to avoid claims that the data has been altered or subjected to spoliation, therefore a chain of custody for the electronic files must be established.22

Copying the files in a mirror image of the original files before sifting through the data is highly recommended. There is always the possibility that the software or the hardware you use might corrupt the data files being examined. Always remember that a proactive approach to the electronic documents gives you a much better chance for success than a passive approach.

IV. Using Technology For Depositions
Depositions are a very important part of the discovery process and there are very few attorneys who do not at least videotape the deposition. In the past, court reporters used court stenographic equipment to take down the witness's testimony and then at a later time translated it into plain English. With today's advancements, the court reporter's notes can be translated by LiveNote® software so that the attorney can have real-time translation of the transcript running right on his or her computer. LiveNote® also permits remote users to receive the transcript simultaneously. The remote user can communicate with the attorney taking the deposition through instant messaging (i.e. text messages that will pop up on the computer screen.)

The video can also be digitized and is readily viewed on a computer. In the case of web-casting, that testimony can be available to other attorneys on the trial team who did not make the trip to the deposition location.

The advantage of digitizing the video of the deposition is that the transcript and the video can be matched and played together at trial utilizing software, such as Trial-Max®, a product of FTI Consulting. The impact of doing this cannot be minimized. It is one thing for the lawyer or even the witness to read back the portions of the deposition that is in contention. You can be sure that neither will be able to reproduce the inflection of the words when they were first said at the deposition. With the playback of an impeaching deposition, the jury will see the attitude of the witness at the deposition and will be able to judge for themselves whether the witness is lying now or in the deposition. This is a much more effective way at arriving at the truth. Also videos of other witnesses may be used with a witness, such as testimony from a subordinate that contradicts the testifying witness.

V. Digitizing Documents
Attorneys who have access to laptop computers should think very hard about the ways these digital marvels can be utilized to make for a much more efficient process of trial preparation and at trial. Of course, the attorney should always back up the data files on a regular basis to another computer or to a server to minimize the catastrophe from loss or damage. An attorney will never be able to reproduce that volume of work in a short time as the trial quickly approaches should that computer disappear.

The laptop computer is a superior tool for litigation. There are different kinds of litigation management software such as Concordance®, CaseMap® and TrialMax®. Further, the attorney can put all his notes and examinations on the computer. Many attorneys in the past have kept files for the witnesses that would take the stand with all the documents regarding that witness in a file. Sometimes the documents failed to make it to the appropriate file and the lawyer would be at a loss during the examination of the particular witness.

Now, with the use of TrialMax®, those documents can be kept in a witness file on the laptop and if a document is missing, by using an Optical Character Recognition ("OCR") software program such as Concordance, the drive can be quickly searched for the key terms and the needed document can be produced in very little time allowing for a more complete and efficient trial. These files are generally scanned into the laptop computer and set up in Portable Document Format (PDF).23 All correspondence and pleadings may similarly be scanned and placed on the computer. By having them available on the laptop computer during trial, it alleviates the necessity of carrying multiple copies of the paper documents to the courtroom.

VI. Conclusion
The digital age has arrived and courts are making conversions to accommodate it. In many federal courts, parties are required to file papers with the court system electronically and in particular instances provide service of process to an opposing party through e-mail.24 The courts have slowly made accommodations toward implementation of electronics. The public however, and our clients have been much quicker in adapting and accepting the digital age. They have embraced e-mail and word processors, database software to examine data that they have created for so many reasons, leaving a trial of ones and zeroes over millions of miles of wire and fiber and on into storage facilities so vast when the amount of data that is stored in them is considered. It gives almost new meaning to the term "discovery." "A needle in a haystack" was so much easier to spot.

As litigation becomes "paperless," attorneys need to adapt and become masters of gathering and using digital evidence.

Endnotes

1 Access may be found at www.uscourts.gov/allinks.html.

2 Phill Johnson, Free on The ' Net: FindLaw, LexisONE and More, 91 Illinois Bar Journal 579 (November 2003).

3 The website for the Secretary of State for California is www.ss.ca.gov. Likewise, the website for the Secretary of State for Illinois is http://www.cyberdriveillinois.com/.

4 A service of CNN.

5 A service of Microsoft and NBC.

6 Kenneth Dort and George Spatz, Discovery In The Digital Era: Considerations For Corporate Counsel, 20 NO. 9 COMPUTER and INTERNET LAW. 11, 13-4 (September 2003).

7 Id.

8 Id.

9 Id.

10 Id.

11 See Crown Life Ins. Co. v. Craig, 995 F.2d 1376, 1383-4 (7th Cir. 1993); In re Prudential Ins. Co. of Am. Sales Practices Lit., 169 F.R.D. 598, 617 (D.N.J. 1997).

12 Id.

13 David Schultz, The Discovery of Electronic Evidence, in BNA Litigation Forum: Electronic Discovery & Document Retention Conference Materials, Session 1 (May 5-6, 2002).

14 Harry M. Gruber, E-Mail: The Attorney-Client Privilege Applied, 66 GEO. WASH. L. REV. 624, 649 (March 1998) (citing Smith v. Armour Pharmaceuticals Co., 838 F.Supp. 1573 (S.D. Fla. 1993)).

15 Laura Lewis Owens, A. Annette Teichert and David M. Menichetti, Maintaining Your Privileges In The Electronic Age, in BNA Litigation Forum: Electronic Discovery & Document Retention Conference Materials, Session 5, at 16 (May 5-6, 2002).

16 Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340, 358 (1978).

17 Rowe Entertainment, Inc. v. The William Morris Agency, Inc., 205 F.R.D. 421, (S.D.N.Y. 2002) (the first court to enumerate 8 factors that should be taken into consideration in order to shift the cost of production to the requesting party).

18 Id.

19 WORD® has this property button on the "File" pull-down menu.

20 Natalie L. Regoli, A Tort For Prying E Eyes, 2 JOUR. of LAW, TECHNOLOGY & POLICY 267, 271 (2001).

21 Dort, Discovery In The Digital Era: Considerations For Corporate Counsel, at N6.

22 Stephen M. Dorvee, Electronic Discovery in Technology Litigation, 734 PLI/Pat 417, 436 (2002).

23 A reference to the Adobe® software format utilized for creating and reading these files.

24 Rio Properties, Inc. v. Rio International Interlink, 284 F.3d 1007 (9th Cir. 2002) (holding that a foreign defendant engaged in electronic commerce where his main means for communication was e-mail could be served process by e-mail); Heather A. Sapp, You've Been Served! Rio Properties, Inc. v. Rio International Interlink, 43 Jurimetrics 493 (2003) (making the case for a change to FRCP 4 to allow service by e-mail).

Bibliography

1. Kenneth Dort and George Spatz, Discovery In The Digital Era: Considerations For Corporate Counsel, 20 NO. 9 Computer and Internet Law. 11 (September 2003).

2. Phill Johnson, Free on The ' Net: FindLaw, LexisONE and More, 91 Illinois Bar Journal 579 (November 2003).

3. Heather A. Sapp, You've Been Served! Rio Properties, Inc. v. Rio International Interlink, 43 Jurimetrics 493 (Summer 2003).

4. Stephen M. Dorvee, Electronic Discovery in Technology Litigation, 734 PLI/Pat 417, 436 (2002).

5. Harry M. Gruber, E-Mail: The Attorney-Client Privilege Applied, 66 GEO. WASH. L. REV. 624, 649 (March 1998).