Disputing Protocols for the Electronic Exchange of Discoverable Documents in the Federal Court of Australia
April 1, 2008 30 January 2009: Please refer to the bottom of this page for updated information in relation to the revised Federal Court's Practice Note 17.
Preliminary
The Federal Court recently made orders in two (2) similar, yet separate, cases wheredisputes arose over the application of a document management protocol (protocol)to facilitate the electronic exchange of discoverable documents.
Jarra Creek Case
Jarra Creek Central Packing Shed Pty Ltd v Amcor Limited [2006] FCA 1802 (Tamberlin J).
In this Trade Practices litigation, the applicant (Jarra) put forward an Amended Notice of Motion containing orders for discovery which were disputed by the respondents (Amcor) on three points. The dispute in relation to the application of the protocol is referred to as the 'third dispute'.
The protocol specifies, at [14]:
“the form in which information is to be provided by the parties in the ... proceeding and contains provisions in relation to specific categories of metadata and the de-duplication of electronic documents”.
Litigation Timeline
- February 2006 – Orders for (general) discovery (per Heerey J)
- June 2006 – Visy entities and ACCC agree upon protocol
- December 2006 – Discovery is well-advanced, Hearing in relation to disputed Amended Notice of Motion
Electronic Exchange of Additional Metadata Fields
Jarra sought that all parties adopt near de-duplication technology (e.g. Equivio) to identify and remove 'near duplicate' electronic documents and e-mails. As a furtherance to using MD5 hash values to identify and remove 'exact duplicates', near de-duplication presents the opportunity to group (or cluster) and review electronic documents and e-mails containing 'immaterial differences'.
For example, two (2) Microsoft® Word documents containing the same content, except for one (1) character, are not exact duplicates. However, such documents are likely to be identified as 'near duplicates' using appropriately configured and tested technology.
The use of such technology required the electronic exchange of nine (9) additional metadata fields and is still relatively costlyto adopt in themajority of proceedings. In relation to the additional time and cost expenditure, Jarra made no offer to meet the costs of the other parties to facilitate compliance with theirproposed protocol.
Justice Tamberlin dismissed Jarra’s motion on this point, and stated, at [27]:
“Although I am satisfied that metadata could prove useful in providing additional searchable information to reduce the number of discoverable documents, I am not persuaded that the incremental nine (9) data fields are necessary at this point. Again, I think that inspection should first be undertaken of the thousands of documents which will be produced under the ACCC Protocol as it now stands. The question as to the necessity for the additional metadata fields involving further expense can then be deferred and canvassed if necessary on a fresh application at a later stage, with the assistance of reference to specific documents.”
Document Production Format
In Australia and abroad, three (3) options prevail for the production of electronic documents and e-mail, i.e.
1.Native (Original) Format;
2.Tagged Image File Format (TIFF); and/or
3.Portable Document Format (PDF).
The protocol required the production of discoverable documents as single-pageTIFF images. Single-page TIFF, as opposed to Multi-page TIFF, produces each page of a document, as a separate TIFF image file. Stated at [25]:
“[t]he essential difference between these two formats (i.e. TIFF and PDF) is that the PDF format is "text-searchable," whereas with the TIFF format each page is scanned as a single image and cannot be text-searched.”
This assertion is likely seen as controversial by some litigation support personnel and systems that are still overtly reliant upon TIFF imaging. Consequently, it must be noted that TIFF images can be text-searchable when the text is extracted from the image using Optical Character Recognition (OCR). Notwithstanding technicalities, PDF was developed to replace the TIFF, supports greater file compression, document security features, embedded text-searching andthe ability to easily redact (mask) part-privileged and/or part-confidential documents(PDF v1.7).
Sidenote: The forthcoming Federal Court Practice Note 17 recommends the electronic exchange of discoverable documents in their native form and/or as 'Searchable PDF'.
No issue was raised by any party, that, in compliance with the protocol, discoverable documents, and their associated metadata, were required in a FTI Ringtail® Legal™ load file (i.e. export.mdb).
Justice Tamberlin also dismissed Jarra’s motion on this point, and stated, at [25-26]:
“I note that the Amcor entities do not object to production in PDF format. However, the Visy entities say that such a requirement is unduly oppressive and that the production of documents in PDF format will involve substantial extra time and expense as well as the duplication of documents in two different formats. It is further submitted that the Visy entities are well advanced in preparing discovery using the TIFF format. Jarra responds by arguing that this objection can be met by limiting the PDF requirement to future discovery.
The difficulty with this approach is that there will be then two different formats used for production and discovery in the present proceedings. Again, Jarra does not offer to meet any costs of the conversion of the records from TIFF format to PDF format. Having regard to the material before me, I do not think it is appropriate at this stage for an order to be made requiring the conversion of records to PDF format. I am not convinced that sufficient cause has been shown to depart from the ACCC Protocol in relation to this.”
Ford Case
Transcript of Proceedings, Ford Motor Company of Australia Ltd & Ors v Jefferson Ford Pty Ltd (Federal Court of Australia, Jessup J, 15 January 2008).
Electronic Exchange of Additional Metadata Fields
Inanother Trade Practices litigation, currently under appeal, the applicant (Ford Motor Company of Australia) and the respondent (Jefferson Ford, a Ford motorcar dealership), were unable to agree upon the inclusion of two (2) metadata fields to be electronically exchanged in relation to all discoverable documents, i.e.:
- Message Digest algorithm 5 (MD5) hash value; and
- Original File Path.
Electronic exchange of the 'MD5 hash value' field facilitates the ability to identify and remove duplicate electronic documents and e-mail (de-duplication). Further, as a 'digital fingerprint', the MD5 hash value allows an individual to compare one electronic document against another for the purposes of verifying authenticity.
Electronic exchange of the 'Original File Path' (often called 'Relative Path') facilitates the ability to understand where the electronic document or e-mail was originally stored (or the electronic location from which it was sourced). As a basic example, the file path 'C:\Users\John\Documents\' would, prima facie, support a proposition that a document was originally stored in John's Documents folder.
A Unique Case
This litigation is unique as it was the first to reference the forthcoming replacement to Practice Note 17 (20 April 2000). However, it appeared a matter of priority for counsel for the respondent, Mr Panna S.C., to ensure the Court was appropriately focused. In essence, the respondents were requesting anorderto amend theexisting protocol to formally includethe electronic exchange of specified metadata fields, to which the applicants had apparently previouslysuggested and/or agreed(at least, in part).
MR PANNA: ...Are we to use the technological facilities that are now available to us in this court to enhance both the discovery process and the litigation process? The dispute isn’t between whether Practice Note 17 applies or whether the court should take into account the proposed amendment to what is a new Practice Note 17. The issue is much simpler than that. What we do know is that the court has moved as much as it can to utilise technology to assist in the litigation process.
MR PANNA: Now, the discovery by electronic means enable the more efficient use of time, more efficient use of the discovery process, it will permit an analysis of documents in a way which was not possible previously and we say that’s exactly what the court, in fact, is encouraging everybody to do. In fact, if I may take your Honour to the existing Practice Note 17. In paragraph 1 it reads:
"The primary purpose of this practice note is to encourage the use of information technology during the discovery process in civil litigation in the court but the parties are also encouraged to consider the use of information technology during trial. Parties are encouraged to consider these issues from the commencement of the proceeding."
HIS HONOUR: Yes, I have it, I looked at it recently, I am familiar with the Practice Note, yes.
Order Considerations
In thought as to whether to make such an order, His Honour considered whether providing additional fields for exchange constituted an expansion of a party's discovery obligations, an analogy to traditional (i.e. paper-based) discovery and tentatively concluded with a cautious acceptance of MD5, and technological advances, in general.
HIS HONOUR: ...I suppose underlying all of this is an issue which is of concern to me and that is whether what you are asking me to do is really to expand the obligations of discovery in the substantive sense which the applicant carry, or whether this really is just a technological protocol or the better giving effect to such obligations as they have.
MR PANNA: Well, our position is it’s, very much, the latter. Going back to basic principle, as far as this court is concerned, it’s now being said that no party has a right to discovery as opposed to the Supreme Court systems which there is a right to discovery. So all discovery processes is controlled by the court. What we are saying in this application is – here we have – the court must shape the discovery process and, therefore, the obligations it will impose upon the parties in accordance with the needs of each case. Here, we have got the ability to apply technology to a substantial number of documents to be discovered, there’s something like, apparently at this stage, ten and a half thousand documents to be discovered by the applicants.
It’s not increasing, in any sense, the obligation of the applicants to discover. They are simply being requested to provide what they will already have done is generate and have generated and MD5 hash value as part of their own discovery provided to us which will enhance the discovery process for us and, similarly, for us we will do the same thing, it will enhance the discovery process for them. So we are not, in any sense, in my submission, increasing the obligations or the burden of discovery on the applicants.
HIS HONOUR: No, it’s not the burden that’s concerning me at the moment, it’s the substance of the matter.
MR PANNA: Yes.
HIS HONOUR: For example, in normal discovery process such as might have occurred 30 years ago, it may well be that what happens first in a client’s office or a solicitor’s office is that someone sits down and makes a series of notes as to relevance and all sorts of cross-references and, perhaps, even gives an identifier to every document but that’s just in their file so that they can handle the documentary weight of the case.
MR PANNA: Yes.
HIS HONOUR: They would never have been obliged to discover those notes, would they?
MR PANNA: I’m not sure whether that’s correct, your Honour, but it would not have been of any use, in any real sense, to the other party to have that notation.
[...]
HIS HONOUR: For the moment, I’m accepting that the MD5 (hash value) will be of some use.
[...]
HIS HONOUR: I’m not sure that that’s right but I will accept that it will be. It’s a question of whether you are asking me to require the applicants to give discovery of something which wouldn’t normally be discoverable.
MR PANNA: In my submission, it would be – as far as this application – it is discoverable because it’s really part of generating electronic documentation.
HIS HONOUR: That’s right, it’s a forensic indicator ‑ ‑ ‑
MR PANNA: Yes.
HIS HONOUR: ‑ ‑ ‑ rather than something which inheres in the document before this litigation started.
MR PANNA: Yes, but that’s no reason why that should not be discovered in this day and age.
HIS HONOUR: Well, as you talk about the approach of the court – which is quite appropriate to do, there is also a general disinclination to burden parties with – I suppose I’m getting back to burden a bit now, but general disinclination not to provide accretions to the obligations which parties have and, in fact, in some cases, to streamline the process and I just wonder whether this is possibly another example of, because something can be done technologically, we say, well, it can be done, we will do it.
Costs Considerations
His Honour approved orders to amend the existing Document Protocol to include the specified metadata fields. In respect of costs, the applicant’s costs were conditionally reserved, pending any further statement as to lack of utility.
HIS HONOUR: The other thing I think I might do – I should put this to you, Mr Panna, is that I have decided the MD5 hash valueaspect in your favour but there is a little bit, on my part, there is a little bit of an act of faith here that I’m really accepting your submissions that this is really going to be the way of the future and that this is something which, in ways, perhaps which we can’t presently put our finger on, will be a very useful in this litigation.
MR PANNA: Yes.
HIS HONOUR: I’m inclined to – subject to anything you say, normally the costs of generating this algorithm on each side would be that party’s costs in the course.
MR PANNA: Yes.
HIS HONOUR: But since you wanted to do it and Mr Heerey’s case is, essentially, that it was just unnecessary and it might be, well, perhaps not counter-productive but at least might cause more heat than light or whatever, I’m inclined to reserve the applicant’s costs of providing the hash algorithm values. I hope that nothing will need to be said about that further down the track, but if it turns out, in the fullness of time, that this has been a terribly expensive and pointless waste of time, I think that the applicants are entitled to come back and say, look, we told you so and we’re X thousand dollars out of pocket and this is exactly what we said was going to happen and you took the respondent on faith and now look what we have done.
MR PANNA: I understand what your Honour is saying. If this were not of any value I would be surprised why the applicants, in fact, proposed the (MD5 hash) algorithm in the first place.
HIS HONOUR: I hear what you say about that and I’m not anticipating any problems about the question and I think the much more likely outcome will be that the costs will simply be the applicant’s costs in the course and yours will be your costs in your course.
Lessons from Jarra Creek and Ford
- Promptly consult an eDiscovery expert or your firm'slitigation support team, to ensure that your partycan comply with any document management protocol;
- If your party is responsible fordrafting a document management protocol, verify that it satisfies your human functionality requirements (e.g. searchable-text); and
- If your party doeswant to change the document management protocol after the commencement of discovery, strongly justify your reasoning and be prepared tooffer (at least a large proportion of) costs.
Seamus Byrne
Seamus Byrne
Reader Comments