Extended Stay America, Inc. et al v. Woodspring Hotels, LLC et al
ORDER granting in part and denying in part 57 Motion for ESI Ruling. Signed by Magistrate Judge James P. O'Hara on 1/12/2017. (ah)
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS
EXTENDED STAY AMERICA, INC., et al.,
Case No. 16-2744-CM
WOODSPRING HOTELS, LLC, et al.,
The parties in this unfair competition case have filed a joint motion to resolve a
dispute regarding discovery of electronically stored information (“ESI”), more
specifically, a protocol for forensically examining certain computers and cell phones that
already have been retrieved and “mirror” imaged (ECF No. 57). Within just a few weeks
of suit being filed, the parties and their able counsel reached agreement on a protective
order and also a separate order for preservation of the status quo, non-use and nondisclosure of information, document preservation, and expedited discovery (ECF Nos. 33
and 34). And they have thoroughly, concisely, and precisely set out their respective
protocol positions in the joint brief accompanying the instant motion (ECF No. 58).
Under the unique set of facts presented in this litigation (and without purporting to
set any bright-line precedent as to what might be appropriate in another case), the
undersigned U.S. Magistrate Judge, James P. O’Hara, generally finds the second of the
protocols alternatively proposed by plaintiffs, i.e., in the form attached as Exhibit B to the
parties’ joint brief, is most consistent with the mandate of Fed. R. Civ. P. 1 that civil
litigation be conducted in a “just, speedy, and inexpensive” manner.
respectfully overrules defendants’ implicit objections that plaintiffs’ protocol would
result in overly broad and unnecessarily intrusive discovery, and thus the court declines
to adopt the protocol attached to the joint motion as Exhibit F.
The court, however, has modified plaintiffs’ proposed protocol with regard to
forensic examination of the devices in question, as set out below:
Protocol For Copying and Searching Hard Drives
The parties must, by January 17, 2017, identify their respective computer
forensics expert (the “Experts”). The Experts must, by January 24, 2017,
execute a confidentiality agreement agreed to by the parties. The Experts
must further sign and abide by the protective order entered in this action
(ECF No. 33).
The Experts must follow a three-step imaging, recovery, and disclosure
process, as follows.
In accordance with paragraphs 3.h, 3.i., and 3.j of the November 22, 2016
Stipulation and Order Regarding Preservation of Status Quo, Non-Use and
Non-Disclosure of Information, Document Preservation, and Expedited
Discovery (ECF No. 34) (the “Stipulation and Order”), Defendants
WoodSpring, Ruby, and Docteroff have engaged their own Experts to
forensically image the devices referenced in paragraphs 3.h, 3.i., and 3.j of
the Stipulation and Order (the “Imaged Devices”).
At the request of any other Party (the “Requesting Party”), WoodSpring,
Ruby, and Docteroff must provide a forensic image of the Imaged Devices
(at the Requesting Party’s expense) to the Requesting Party’s Expert.
The Requesting Party’s Expert must handle any forensic images of the
Imaged Devices produced pursuant to paragraph (d) above in accordance
with this computer search protocol and the protective order entered in this
action, and must not share any information or data recovered from the
Imaged Devices with any other Party or the Parties’ attorneys except
pursuant to the process set forth in paragraphs (g)-(i) below.
After receiving a forensic image of any of the Imaged Devices, the
Requesting Party’s Expert may from time to time, at the request of the
Requesting Party’s attorneys, assist the Requesting Party’s attorneys in
searching for data responsive to certain key words, date ranges, or other
search criteria (“Discoverable Information”). Before submitting any search
criteria to the Requesting Party’s Expert, the Requesting Party’s attorneys
must confer with the attorneys for the Party whose Imaged Device is the
subject of the search in good faith to attempt to craft searches that are
reasonably designed to primarily capture information that is likely to be
discoverable within the scope of Fed. R. Civ. P. 26(b)(1). If the parties are
unable to reach agreement on any particular set of search terms, the
Requesting Party may request that the court rule on the objecting party’s
objections. This request, however, must be done by the parties jointly filing
a motion, limited to 2 double-spaced pages, summarizing in bullet-point
fashion and asking the court to resolve their remaining disputes. As relates
to this motion, the parties must jointly file a separate supporting brief,
limited to 10 double-spaced pages, equally divided between the plaintiffs
and defendants (collectively) and explaining their respective positions.
As the Requesting Party’s Expert from time to time locates any purported
Discoverable Information requested by the Requesting Party’s attorneys, it
may, after compliance with the limits and procedure outlined in
subparagraph (h) below, provide all such Discoverable Information to the
Requesting Party’s attorneys; provided, however, that the Requesting
Party’s Expert must not provide to the Requesting Party’s attorneys copies
of any purportedly Discoverable Information which contains Privileged
Matters or otherwise objectionable matters as determined by the attorneys
for the Party whose Imaged Device is the subject of the search pursuant to
the procedure in subparagraph (h) below.
Before producing to the Requesting Party’s attorneys any purported
Discoverable Information recovered from the Imaged Devices, the
Requesting Party’s Expert must first provide such purported Discoverable
Information to the attorneys for the Party whose Imaged Device is the
subject of the search and from which the purported Discoverable
Information was recovered. The attorneys for the Party whose Imaged
Device is the subject of the search must, within 10 business days from
receipt of the purported Discoverable Information, review the purported
Discoverable Information for material covered by the attorney-client
privilege or the work product doctrine (the “Privileged Matters”) or matters
which are objectionable or do not constitute information discoverable under
Fed. R. Civ. P. 26(b)(1) and provide the Requesting Party’s Expert and
Requesting Party’s attorneys a log which states each privilege or objection
and describes the files, documents, data, or information that contain
objectionable or Privileged Matters; see below for privilege log
requirements. If, based on its review of the log, the Requesting Party
disagrees with the objection to or designation of any purported
Discoverable Information as objectionable or privileged, the Requesting
Party may request that the court rule on the objection or designation. This
request, however, must be done by the parties jointly filing a motion,
limited to 2 double-spaced pages, summarizing in bullet-point fashion and
asking the court to resolve their remaining disputes. As relates to this
motion, the parties must jointly file a separate supporting brief, limited to
10 double-spaced pages, equally divided between the plaintiffs and
defendants (collectively) and explaining their respective positions. Such
purported Discoverable Information must not be disclosed to the
Requesting Party’s attorneys and must be treated as Privileged Matters or
matters beyond the scope of information discoverable under Fed. R. Civ. P.
26(b)(1) until the dispute is resolved by the court. Until the earlier of the
provision of the log to the Requesting Party’s attorneys and the Requesting
Party’s Expert or the expiration of 10 business days from receipt of the
purported Discoverable Information by the attorneys for the Party whose
Imaged Device is the subject of the search, any purported Discoverable
Information (or any other information) recovered by the Requesting Party’s
Expert from the Imaged Devices must not be provided to Requesting
Party’s attorneys under paragraph (g) above.
All employees and staff of the Experts involved with the inspection and
handling of the Imaged Devices must use such information only in
accordance with this computer search protocol, but subject to further order
of the court, and must not use such information for any other purpose,
including, business, governmental, commercial, or administrative or
judicial proceedings. All such employees and staff, prior to performing any
actions, must sign and abide by the protective order entered in this case.
To guard against overly aggressive assertions of attorney-client privilege or workproduct protection, and ensuing delays in completing discovery, the court respectfully
reminds the parties and counsel of what was discussed during the scheduling conference
on December 20, 2016, about the significance of Fed. R. Civ. P. 26(g).
Scheduling Order, ¶ 2(j) (ECF No. 53 at 8-9). And, more specifically as relates to
privilege assertions, counsel should bear in mind that case law in this district provides a
wealth of guidance as to what is–and is not–protected. With respect to the attorney-client
privilege, it is important to note first that “personal, confidential, [or] private
information” is not necessarily privileged.1
As this court has held repeatedly,
“confidential” does not equate to “nondiscoverable” or “privileged.”2 Second, it is clear
that “[u]nderlying facts are not protected by the privilege.”3 “Similarly, neither the acts
or services performed by an attorney during the course of his representation, nor the
scope of representation, are within the attorney-client privilege because they are not
AKH Co., Inc. v. Universal Underwriters Ins. Co., No. 13-2003, 2014 WL 2760860, at *7 (D.
Kan. June 18, 2014).
Id. (quoting Williams v. Evogen, Inc., No. 12-2620, 2013 WL 3773840, at *3 (D. Kan. July 17,
Sprint Commc’ns Co., L.P., v. Comcast Cable Commc’ns, LLC, Nos. 11-2684, 11-2685, 112686, 2014 WL 545544, at *4 (D. Kan. Feb. 11, 2014) (quoting Williams v. Sprint/United Mgmt.
Co., No. 03-2200, 2006 WL 1867478, at *10 (D. Kan. July 1, 2006)).
‘communications.’”4 Nor are “general topics of attorney-client discussions” or ultimate
“legal conclusions” of counsel protected.5
Case law from this district also provides direction about the scope of work-product
This court has explained that “the doctrine is not intended to protect
investigative work unless done so under the supervision of an attorney in preparation for
the real and imminent threat of litigation or trial.”6 “Although certain actions by an
adverse party, such as submitting a reservation of rights letter, might be considered
precursors to litigation, the work product doctrine requires more than a mere possibility
of litigation.”7 Finally, the parties and counsel are directed to review the extensive
analysis of when a document is “prepared in anticipation of litigation” set out by U.S.
Magistrate Judge Gerald L. Rushfelt in Marten v. Yellow Freight System, Inc.8
When documents are withheld under the attorney-client privilege or work-product
protection, the burden is on the withholding party to produce a reasonably detailed
privilege log. Fed. R. Civ. P. 26(b)(5)(A) provides that
[w]hen a party withholds information otherwise discoverable by claiming
that the information is privileged or subject to protection as
trial-preparation material, the party must:
Id. at *6 (quoting In re Universal Serv. Fund Tel. Billing Practices Litig., 232 F.R.D. 669, 675
(D. Kan. 2005)).
Id. (holding that counsel’s ultimate legal conclusion that defendants infringed patent was not
the type of substantive communication protected by the attorney-client privilege).
AKH Co., Inc., 2014 WL 2760860, at *2 (quoting McNabb v. City of Overland Park, No. 122331, 2014 WL 1152958, at *8 (D. Kan. March 21, 2014)).
No. 96-2013, 1998 WL 13244, at *10-11 (D. Kan. Jan. 6, 1998).
(i) expressly make the claim; and
(ii) describe the nature of the documents, communications, or
tangible things not produced or disclosed and do so in a manner that,
without revealing information itself privileged or protected, will enable
other parties to assess the claim.
The parties and counsel are forewarned that, if a party fails to make the required showing,
by not producing a privilege log or by providing an inadequate one, the court may deem
the privilege waived.9 “The information provided [in a privilege log] must be sufficient
to enable opposing counsel (and later, if necessary, the court) to determine whether each
element of the asserted privilege or protection is satisfied.”10 Specifically, instead of the
bare-bones, largely conclusory sort of log that many lawyers tend to serve on opposing
counsel, courts have required that a privilege log include the following information:
The date upon which the document was prepared;
The date of the document (if different from # 2);
The identity of the person(s) who prepared the document;
The identity of the person(s) for whom the document was prepared,
as well as the identities of those to whom the document and copies
of the document were directed, “including an evidentiary showing
based on competent evidence supporting any assertion that the
document was created under the supervision of an attorney;”
A description of the document explaining whether the document is a
memorandum, letter, e-mail, etc.;
The purpose of preparing the document, including an evidentiary
showing, based on competent evidence, “supporting any assertion
New Jersey v. Sprint Corp., 258 F.R.D. 421, 448 (D. Kan. 2009).
Id. (quoting Hill v. McHenry, No. 99-2026, 2002 WL 598331, at *2 (D. Kan. Apr. 10, 2002)).
that the document was prepared in the course of adversarial
litigation or in anticipation of a threat of adversarial litigation that
was real and imminent;” a similar evidentiary showing that the
subject of communications within the document relates to seeking or
giving legal advice; and a showing, again based on competent
evidence, “that the documents do not contain or incorporate
non-privileged underlying facts;”
The number of pages of the document;
The party’s basis for withholding discovery of the document (i.e.,
the specific privilege or protection being asserted); and
Any other pertinent information necessary to establish the elements
of each asserted privilege.11
IT IS SO ORDERED.
Dated January 12, 2017, at Kansas City, Kansas.
s/ James P. O’Hara
U.S. Magistrate Judge
Id. at 448-49 (quoting In re Universal Serv. Fund Tel. Billing Practices Litig., 232 F.R.D. at
673 (emphasis added)).
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