During Initial Case Management Conferences, Magistrate Orders Mirror Imaging of All of Defendants’ Computers and Peripheral Equipment at Plaintiffs’ Expense, and Orders Parties to Meet and Confer on Appropriate Search Protocol

Balboa Threadworks, Inc. v. Stucky, 2006 WL 763668 (D. Kan. Mar. 24, 2006)

Plaintiffs sued under the Copyright Act and the Lanham Act, claiming that defendants wrongfully copied digital embroidery designs and then sold the designs to at least one third party. Defendants filed a counterclaim and third party complaint alleging fraud and civil conspiracy.

At a status conference, the parties advised that they were working on a protocol for conducting the mirror imaging of defendants’ computers. They were having disagreements, however, about which computers should be mirror imaged. Another status conference was scheduled for the parties to report on whether agreement had been reached about which computers to image. The parties were also urged to meet and confer about a search protocol to be used to search the mirror images.

No agreement was reached, and the parties submitted letter briefs on the matter. After hearing oral argument, the court issued this opinion. Ultimately, the court ordered that all of defendants’ computers and peripheral equipment, such as ZIP drives, must be made available for mirror imaging, at plaintiffs’ expense, in accordance with the protocol previously agreed to by the parties. Further, the court directed counsel for the parties to “meet and confer, using their computer experts, in an attempt to design a search protocol to be used in searching the mirror images for information which is relevant to the claims and defenses in this case and the subject matter of the present case, while preserving any claims of attorney client privilege and protecting the confidentiality of personal information located on the mirror images which is not related to the claims and defenses or the subject matter of the present case.”

Background of the discovery dispute: The dispute as to which computers and related hardware were to be mirror imaged centered on machines owned by defendants Ronald and Sherry Stucky. Sherry operated an embroidery business and used a computer in that business. She also owned another computer which she claimed was not used in the business, and a laptop that was connected to her embroidery machine and controlled the patterns being created by that machine. Sherry did not object to the mirror imaging of her business computer, but did object to any mirror images of the other computer. It was “somewhat unclear” to the court whether she objected to a mirror image of the laptop unit or not.

Sherry’s husband, Ronald, had several computers, although the court was not provided with a precise listing of how many or what kind of units he had. Ronald apparently used one computer regularly, but did not use the others on a regular basis because they were older. Ronald objected to any of his computers being the subject of mirror imaging, arguing that he was not engaged in the embroidery business and his computers were not used in the business. Ronald argued that there was no showing by plaintiffs that any information on his computers would be calculated to lead to the discovery of admissible evidence in the case.

Plaintiffs argued that any of the defendants’ computers could have been used to download copyrighted embroidery patterns and all of defendants’ computers should therefore be mirror imaged in order to preserve any relevant information pertaining to this case. Plaintiffs argued that Ronald was joined as a party as an alleged contributory infringer, and that he participated to some degree in the embroidery business by attending shows with his wife and being involved in the purchase of embroidery equipment. Plaintiffs also urged that they had received information via third parties that defendants had already “erased” or “deleted” information from some of their computers. No affidavits or testimony concerning these allegations were presented. Plaintiffs pointed to one document – an email printed on Ronald’s header – that was received during document production in this case as evidence that Ronald used his computer in connection with the embroidery business.

Defendants presented an affidavit from Sherry Stucky which explained why the email had Ronald Stucky’s header on it. A copy of the email was attached to the affidavit. The affidavit stated that when the third party defendant (“Dando”) received the allegedly infringing copy of an embroidery pattern belonging to plaintiffs, Dando refused to pay Stucky for it by stopping payment through the PayPal system. PayPal then emailed Sherry Stucky notice of this fact and she sought her husband’s assistance in drafting a reply. In order to do so, she forwarded the PayPal email to Ronald; he accessed it via his computer and drafted a reply; he then printed a copy of that reply and gave it to Sherry rather than sending it back to her via email.

The court’s analysis: The court began by stating that it is not unusual for a court to enter an order requiring the mirror imaging of the hard drives of any computers that contain documents responsive to an opposing party’s request for production of documents.

A “mirror image” is generally described as “a forensic duplicate, which replicates bit for bit, sector for sector, all allocated and unallocated space, including slack space, on a computer hard drive.” Thus, in similar cases where trade secrets and electronic evidence are both involved, the Courts have granted permission to obtain mirror images of the computer equipment which may contain electronic data related to the alleged violation. This is one method of assuring the preservation of evidence since electronic evidence can easily be erased and manipulated, either intentionally or unintentionally (by overwriting through continued use of the computer).

(Citations and footnote omitted.) At the same time, the court noted that courts have been cautious in requiring the mirror imaging of computers where the request is extremely broad in nature and the connection between the computers and the claims in the lawsuit are unduly vague or unsubstantiated in nature. The court further observed:

In this case, the issue of which computers shall be subject to mirror imaging arises through initial case management conferences rather than through the more formal means of a motion to compel discovery or a motion for entry of a preservation order. To some extent, this places the Court at a disadvantage since it does not know precisely the scope of the parties’ paper discovery requests which have preceded the current dispute or the completeness of any discovery responses. Those matters have all been reserved for later determination if the parties cannot resolve any pending disputes.

Furthermore, Plaintiffs have produced no affidavits to support their arguments that Defendants have purportedly deleted information from some of their computers. Instead, they submit an affidavit of a computer expert which only outlines, in general terms, why he believes it is important to collect digital and electronic evidence early in a case in order to avoid the possibility that relevant files are deleted or other residual data is overwritten or otherwise destroyed during normal computer use.

Similarly, Defendants argue, through counsel, that several of their computers were not used in the embroidery business, but they have not submitted any affidavits to support those general conclusions. While they did submit the affidavit of Sherry Stucky to show how one particular document of Ronald’s was created, it goes no further.

The court concluded:

After considering all of the arguments and affidavits, the Court finds that it is reasonable to conclude that some relevant evidence concerning the claims and defenses raised by the parties in this case or evidence relevant to the subject matter of this action may be found on any of Defendants’ computers. The fact that Ronald Stucky used one of his computers to draft a document that is related to alleged acts of infringement in this case (albeit created after the date of the alleged infringement) runs contrary to claims that his computers were never used in connection with the embroidery business. Furthermore, because the alleged infringement in this case is claimed to have occurred through the use of computers to download copyrighted material, the importance and relevance of computer evidence is particularly important. For this reason, the Court will order that all of Defendants’ computers and peripheral equipment, such as ZIP Drives, shall be made available for mirror imaging, at Plaintiffs’ expense, in accordance with the protocol previously agreed to by the parties.

The court noted that, since the parties had apparently agreed on the protocol for obtaining a mirror image of the computers, it did not need to consider the appointment of a neutral court computer expert to accomplish the imaging. The court stated that the challenge would be to arrange for the mirror imaging to be undertaken without undue burden of defendants. It noted that defendants had not argued that the imaging process would cause a substantial interruption of their embroidery business, and that the cost of these mirror images was being borne entirely by plaintiffs. Thus, the court concluded that the process of mirror imaging of defendants’ computers would not be an undue burden to defendants.

Defendants argued that they should be entitled to be present during the imaging process, and to have a computer expert present to observe that process, which would be a cost to them. The court stated that there was no showing that this cost would be an undue burden, and since defendants had already agreed that some of their computers could be imaged, the imaging of all of defendants’ computers could presumably be accomplished at the same time and without expending an unreasonable amount of additional time.

Finally, the court observed that the confidentiality of information on the computers which was not relevant to the claims or defenses of either party or to the subject matter of this case could be protected through both the terms of the existing Protective Order and through the design of the search protocol to be used in searching the mirror images.

The court further directed:

No searches of the mirror images obtained through the use of this Order shall be conducted until the parties have agreed on an appropriate search protocol that will address the issue of protection of attorney client privilege and non-business related personal information which may be located on the computer hard drives. Also, the Court would consider approving a procedure where the agreed search protocol is used sequentially on the various computers, with the first searches being run on computers which were admittedly used in the embroidery business and the laptop that operates the embroidery machine. Then, based upon the results of those searches, consideration could be given as to whether searches of some or all of Ronald’s computers appear justified or not, or whether a different search protocol for those computers would be warranted. Those are matters that counsel should discuss as they work to define the search protocol to be used.

As to the formulation of a search protocol, whether one using key word searches and/or other search procedures, the parties are directed to meet and confer in an attempt to agree on an appropriate protocol, and should lean heavily on their respective computer experts in designing such a protocol. Numerous types and varieties of search protocols have been discussed and adopted by courts and these may guide the parties in designing a search protocol to be used in this case. See e.g., Rowe Entertainment v. William Morris Agency, 205 F.R.D. 421, 432-22 (S.D.N.Y.2002); Simon Property Group L.P. v. MySimon, Inc., 194 F.R.D. 639, 641-44 (S.D.Ind.2000); Playboy Enterprises v. Welles, 60 F.Supp.2d 1050, 1053-55 (S.D.Cal.1999); Antioch Co. v. Scrapbook Borders, Inc., 210 F.R.D. 645, 653-54 (D.Minn.2002).