“Is That All There Is?” The Western District of Kentucky Gives a Fresh Look to the Standard Supporting ESI Search Sufficiency Challenges

A long-established precept of ESI production challenges is, if you’re complaining that they “must have more than that,” you’d best be able to support that position if your goal is to force your adversary to redo its search. Maker’s Mark Distiller, Inc. v. Spalding Grp., Inc., et al., No. 3:19-CV-00014-GNS-LLK (W.D. Ky. Apr. 20, 2021) brings this point home in full force. In that decision, which involved a Lanham Act trade dress dispute, United States Magistrate Judge Lanny King addressed plaintiff Maker’s Mark’s complaint that defendant Spalding’s ESI production was so paltry and otherwise deficient that Spalding should be compelled to implement a new ESI search. Ultimately, the court was having none of it. This decision is a reminder of the importance of communication between counsel before and after the Rule 26 conference, as well as the need to establish a compelling factual record of discovery deficiencies before seeking judicial relief.

As a preliminary matter, the court concluded that the plaintiff had waived its ability to challenge the defendant’s production by waiting six months to raise the alleged deficiencies with the defendant and nine months to raise the issue with the court. The court stated that even if the ability to challenge had not been waived, the alleged deficiencies identified did not support an order directing the defendant to redo its entire production. The crux of the plaintiff’s position was that the defendant “chose to employ a flawed search process without making any attempt to meet and confer with Maker’s Mark beforehand, as required by Report of the Party’s Rule 26 Planning Committee.” In support of this argument, the plaintiff identified five categories of evidence to demonstrate the defendant’s flawed process, including: (1) failure to search certain custodians’ ESI; (2) inadequacy of the keyword searches; (3) inappropriateness of Outlook for discovery purposes; (4) self-collection and relevance determinations made by employees (not attorneys); and (5) low number of emails produced, suggesting a failure to produce emails.

The court rejected each of these complaints and refused to order Spalding to redo its search process. In doing so, the court emphasized the fact that neither side cooperated in discovery, noting “it is obvious from the assertion that neither party cooperated in accordance with the agreed 26(f) planning report, thus neither side should be punished merely because they made ‘unilateral’ choices.” While Spalding employees’ collection efforts appeared deficient, the court found this a function of mistake, not purposeful misrepresentation, which Spalding attempted to rectify and the plaintiff refused. Further, the court found no evidence, as the plaintiff claimed, that additional Spalding custodians should have been included in its ESI searches. Finally, the plaintiff’s complaints that Spalding relied improperly on custodian self-collection without sufficient input of counsel also fell on deaf ears, with the court noting the absence of any “smoking guns” pointing to inadequate collection.

This case underscores the importance of early and active cooperation in ESI discovery and creation of a strong factual record of discovery abuses before seeking a motion to compel. Indeed, many of the alleged deficiencies the plaintiff raised in the case are issues that they could have preemptively addressed in an ESI Protocol as part of the Rule 26 process. Notwithstanding this holding, as we have previously discussed, self-collection of ESI is fraught with legitimate pitfalls. This case teaches that those pitfalls should be anticipated and addressed at the outset of the litigation, so that if and when a deficient production rears its head, the record will reflect agreed-to steps and measures that may have been disregarded, thereby paving a path to the drastic remedy of a new search.