Magistrate Sustains Plaintiff’s Objections to TIFF Imaged Documents and Orders Production in Native Format

Hagenbuch v. 3B6 Sistemi Elettronici Industriali S.R.L., 2006 WL 665005 (N.D. Ill. Mar. 8, 2006)

In this patent infringement case, the defendant required plaintiff to come to its Rockford, Illinois offices in order to inspect defendant’s documents and things and to designate those documents and things that plaintiff deemed responsive to his request for production. Plaintiff inspected defendant’s Rockford, Illinois office and designated numerous documents and electronic media consisting of compact discs, floppy discs, and/or DVDs, for copying by the copying service arranged for by defendant. Initially, defendant refused to permit copying of the designated electronic media, offering instead to print out and deliver to plaintiff hard copies of all of the documents contained on the designated discs and DVDs. Plaintiff refused this offer and insisted on receiving identical, electronic copies of the electronic media. Ultimately, defendant decided (against the protests of plaintiff) to convert all of the information on the original electronic media into Tagged Image File Format (“TIFF”) documents that were then downloaded onto compact discs and delivered to plaintiff. According to plaintiff, the compact discs produced by the defendant contained approximately 15,000 TIFF documents.

Dissatisfied with the production of electronic materials, plaintiff moved to compel defendant to produce identical copies of the designated electronic data, arguing that the TIFF documents were fundamentally different from the original documents and were not documents produced as they are kept in the usual course of business. Plaintiff argued that the TIFF documents were “inadequate reproductions” because they:

(1) lack clarity and color, (2) lack metadata that track when a document was created or modified and whether e-mails contained attachments and to whom they were sent, (3) lack clear indications as to where each document starts and stops (i.e., the TIFF pages all run together and make it difficult to determine which pages are part of one document), (4) lack clear indications as to which documents are stored together on the original compact discs and DVDs (i.e., over sixty original compact discs and DVDs were reduced to four compact discs containing TIFF documents), and (5) make it impossible for Plaintiff to use search terms to quickly and efficiently search through the documents electronically.

Defendant acknowledged that there were real differences between the original documents and the TIFF documents, but claimed that the TIFF documents were reasonably usable forms of the designated electronic media that satisfied Rule 34’s requirements. Defendant argued that Rule 34 was simply an “anti-sabotage provision” intended to keep intact the organization of items produced in the manner in which they are kept in the usual course of business, and that it did not require the presentation of evidence in its original format. Further, defendant argued that the TIFF documents provided plaintiff with all the relevant, nonprivileged information he needed in a reasonably usable form. Defendant contended that providing plaintiff with identical copies of the designated materials would amount to granting plaintiff “unrestricted, direct access to 3B6 USA’s database compilations, a practice rejected by the Eleventh Circuit Court of Appeals in In re Ford Motor Co., 345 F.3d 1315, 1316 (11th Cir. 2003).” Finally, defendant argued that converting the original electronic media into TIFF documents was necessary because it allowed defendant to add Bates numbers to every page of every document, “thereby making it possible for 3B6 USA to quickly and efficiently locate and authenticate any documents that Plaintiff refers to or relies upon as this lawsuit goes forward.”

The court sided with plaintiff, noting that defendant had agreed to copy and produce documents and electronic media for plaintiff if plaintiff came to its Rockford facilities and designated which documents, electronic media, and other data compilations he wanted. The court found, in the case of the electronic media, that plaintiff was shown and plaintiff designated certain compact discs and DVDs. “Ultimately, however, [defendant] did not produce the electronic media viewed and designated by Plaintiff. Rather, [defendant] altered the format and characteristics of the electronic media by converting it into TIFF format–essentially creating new documents–and then turned the new documents over to Plaintiff.”

The court noted that the parties did not dispute that the TIFF documents differed in design and content from the materials plaintiff designated, were not identical to the documents shown to plaintiff, and contained less information than the originals. The court further noted that defendant did not suggest that the changes were made to protect confidential or privileged information. Accordingly, the court determined that plaintiff’s objections to the changes were legitimate. “When served with discovery requests, 3B6 USA did not produce documents for Plaintiff in a reasonably usable form but instead required Plaintiff to come to the Rockford facility and specifically designate which items should be copied. Plaintiff complied and is now entitled to identical copies of those materials, in the same form in which 3B6 USA keeps them in the usual course of business.”

The court explained: “As an initial matter, it is clear that the TIFF documents do not contain all of the relevant, nonprivileged information contained in the designated electronic media. The parties agree that, unlike the original electronic media, the TIFF documents do not contain information such as the creation and modification dates of a document, e-mail attachments and recipients, and metadata.”

It also found that defendant’s reliance on In re Ford Motor Co. to be misplaced, since plaintiff was not seeking unlimited access to defendant’s databases, the designated electronic media did not contain confidential, nondiscoverable matters, and the court was not granting “a sweeping motion, let alone granting a sweeping motion in the absence of a hearing or substantive explanation.”

The court concluded:

Finally, the benefits of adding Bates numbers to the TIFF documents do not justify 3B6 USA’s failure to produce the designated electronic media. As discussed in open court, the parties can agree on any number of ways to designate each page of each document produced, including, but not limited to, relying on file names and page numbers. While 3B6 USA stressed that using TIFF documents and Bates stamping makes evidence tampering more difficult and easier to detect, as discussed in open court, the mere fact that a document is in TIFF format and Bates stamped does not make it impossible for a party to tamper with the contents of the document. The Court is confident that both parties will be double checking the authenticity of any documents relied upon by the other side and, while Bates stamping may provide a simple method for locating and authenticating documents, it is certainly not the only method.