July 16, 2008

With the growing importance of electronic records, managing the preservation and disclosure of documents in litigation has become increasingly complex. Carr & Ferrell Partner, Robert Yorio, led a two-hour discussion on best practices in e-discovery.

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The following is an outline prepared by INTA for the roundtable discussion:

1. Overview of Rules Relating to Electronic Discovery
   
   1. Meet & Confer Rules 26(f) and 16(b)
      
      1. The parties must, as soon as practicable and in any event at least 21 days before a scheduling conference is held or a scheduling order is due confer to discuss any issues relating to disclosure or discovery of electronically stored information, including the form or forms in which it should be produced.
      2. The courts scheduling order may include: provisions for disclosure or discovery of electronically stored information.
   2. Definitions Rules 33(d), 34(a) & 45(a)
      
      1. Requesting party may examine and copy electronic business records.
      2. Responding party may have to provide technical support or direct access to its electronic information systems.
      3. Adds “electronically stored information” as a category subject to production.
   3. Production 34(b) & 45(a) (c) (d)
      
      1. Requesting party can specify the form or forms in which it wants electronic information produced.
      2. Responding party can object to the specified form, but...
         a) If it objects to the form, it must state the form in which information will be produced.
         b) Otherwise, if no form is specified, the default is either:
          (1) The form ordinarily maintained in business or
          (2) A reasonably usable form
   4. Dual Discovery Rules 26(a) & 45(d)
      
      1. A party need not provide discovery of electronically stored information from sources that the party identifies as not reasonably accessible because of undue burden or cost.
   5. Safe Harbor Rule 37(f)
      
      1. Absent exceptional circumstances, a court may not impose sanctions under these rules on a party for failing to provide electronically stored information deleted or lost as a result of the routine good faith operation of the party’s electronic information systems.
2. How Should Trademark Practitioners Play by the Rules Before an Infringement Claim Arises?
   The new FRCPs outline additions and changes to electronic discovery. These changes have been discussed previously in many seminars. This discussion is intended to focus on what trademark attorneys should consider when instructing clients on the impact of the rule changes on company policies.
   
   1. Steps to Consider When Advising a TM Client on the Establishment of a Written E Document Retention Policy
      
      1. Inventory all electronic devices including peripherals, blackberries, cell phones, PDA’s, voicemail, home computers that belong to the corporation or are connected remotely to the company’s server.
      2. Make a diagram to schematically show connections including how they are backed up.
      3. Document management systems-how are they organized; what kind of reports can they generate?
      4. Identify which software applications auto-delete or overwrite; does the application allow exceptions for confidential or attorney client privileged documents?
      5. Establish search practices to identify all relevant documents and efficiently retrieve them.
      6. What is a legitimate period after which e-documents should timely be destroyed?
      7. Should you have different retention periods for different types or categories of documents?
      8. Does availability on the USPTO Website obviate the need for retention of prosecution documents and related communication prior to registration?
   2. Enforcement of Policy
      
      1. Determine the appropriate period of time to retain types of docs – TM Applications, evidence of use, discussions regarding first use in commerce etc.
      2. Consistently apply – don’t let employees store e-mails on non-documented devices, or independent storage media.
      3. The policy should provide a mechanism for in-house attorneys to immediately contact the IT Manager of pending or threatened litigation.
      4. One manager should collect and be responsible for retaining or deleting all records.
3. How Should Trademark Practitioners Play by the Rules After an Infringement Claim is Asserted?
   Communicate to all involved to immediately suspend any deletion of e-mail. If not timely, then good faith or the safe harbor exemption may be lost.
   
   1. One person (attorney) determines whether the hold can be lifted/put in place.
   2. Litigation Hold Memo should list people, subject matter and the relevant time period. The memo should be sent individually to all relevant people.
   3. The legal hold memo should identify any computer system for which automated deletion of data may be affected by the Legal Hold, and the Legal Hold memo should be delivered to the Information Technology Department.
   4. The Legal Department and the Information Technology Department should jointly determine how best to practically implement the Legal Hold with respect to the automated deletion of electronic data.
   5. The Information Technology Department is also responsible for implementation of the procedures for handling the data of terminated employees that may be subject to a Legal Hold.
   6. Legal Hold Memo must be sent to the records management department to suspend destruction of affected Inactive Records, and to the Department of Records Coordinator(s) of any impacted departments to suspend destruction of department records not in the control of individual custodians.