Pattishall IP Blog

December 1, 2011

E-Discovery In The Board: A Reasoned Approach

Filed under: E-Discovery, TTAB — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:27 pm

by Phillip Barengolts, Trademark Attorney

The Trademark Trial and Appeal Board (the “Board”) generally follows the Federal Rules of Civil Procedure for purposes of its proceedings, including with respect to discovery.  Thus, discovery of electronically stored information (“ESI”) has become as important in Board proceedings as in federal court litigation.  Unlike a number of federal courts, which have struggled with these issues and sometimes ruled in ways that greatly increase the costs of litigation, the Board recently struck a reasonable balance for engaging in e-discovery in its proceedings.  Specifically, the Board denied an applicant’s motion to compel an opposer to engage in extensive e-discovery in the precedential decision in Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, Opposition No 91195552 and Cancellation No. 92053001 (T.T.A.B. Nov. 16, 2011).[1]

The underlying dispute involves Frito-Lay’s opposition to Princeton’s application to register PRETZEL CRISPS for “pretzel crackers.”[2]  During their mandatory discovery conference, the parties failed to agree on discovery of ESI.  After both both parties served requests for documents, including ESI, Princeton extensively reviewed and produced its relevant ESI – costing Princeton approximately $200,000, with an anticipated $100,000 more to comply with its ongoing obligations under the Federal Rules.  Frito-Lay was less forthcoming, so Princeton moved to compel Frito-Lay to produce ESI in the same manner as Princeton.

At its heart, the dispute is best summed up in the words of the parties’ attorneys (as quoted in the Board’s Order):

  • Princeton’s counsel complained that Frito-lay had not conducted “attorney-managed electronic data retrieval and search” and this “failure to conduct an attorney-supervised ESI retrieval, search (using appropriate keywords) and review has substantially prejudiced [Princeton’s] ability to defend.”  Moreover, “[n]o cost, burden or other reason allows [Frito-Lay] to rely on custodians to search their own files where the results of that policy are clearly insufficient. . .”;
  • Frito-Lay’s counsel responded that Frito-Lay had conducted a “reasonable investigation to locate, gather and produce documents reasonably responsive” to Princeton’s discovery requests, including by identifying document custodians and asking them to search their own files and computers.  Further, attorney-supervised searches of ESI would cost Frito-Lay an additional $70,000 – $100,000, “an expense that would far outweigh the benefit of any information in determining the matters at issue in this proceeding,” especially since the claims in the proceeding pertained solely to Princeton’s mark and Frito-Lay.[3]

For the litigators among you, this dispute likely has a familiar ring.  (more…)

May 16, 2011

Federal Judge Rules Copyright Owner Cannot Pursue Discovery of ISP’s to Learn the Identity of Owners of IP Addresses Accused of Illegally Downloading Pornographic Movies

Filed under: E-Discovery, Internet, Litigation — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 1:25 pm

Categories: Internet, E-Discovery, Litigation
Tags: John Doe Lawsuits, Discovery, Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

Copyright owners in pursuit of file-sharers and illegal downloaders often rely on John Doe lawsuits to learn the identities of the accused infringers.  These owners file suit, then send demand letters to the defendants, and reach quick settlements.  In VPR Internationale v. Does 1-1017, No. 2:11-cv-2068 (C.D. Ill. Apr. 29, 2011), VPR, an adult film producer filed suit and sought class certification against unknown owners of internet protocol (IP) addresses associated with the unauthorized sharing of VPR’s films through the BitTorrent peer-to-peer file sharing protocol.  After filing suit, VPR sought discovery of the Internet Service Providers (ISP’s) that hosted the IP addresses for the defendant file-sharers.

VPR relied heavily on discovery rulings in prior music downloading suits to support its request for discovery from the ISP’s.  Moreover, VPR argued that it needed this discovery because physical evidence of the infringement (i.e., the identifying information) would be destroyed quickly by the ISP’s as part of their routine destruction processes and “because this suit cannot proceed without this information.” (more…)

March 11, 2010

E-Discovery Guidelines and the Seventh Circuit’s Pilot Program

Filed under: E-Discovery — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:49 pm

by Ashly Iacullo and Ian J. Block, Trademark Attorneys

Overbroad discovery requests and acrimony between parties add to litigation costs on both sides of a lawsuit.  In an age in which litigants literally are able to produce terabytes of material—which can take thousands of man-hours to digest and analyze—e-discovery’s rising prevalence in federal litigation amplifies the potential cost of discovery even further.  And, as demonstrated in Judge Shira Scheindlin’s scathing opinion against litigants’ e-discovery methods in Pension Committee of University of Montreal Pension Plan v. Banc of America Securities, LLC,[1] courts expect litigants to preserve their electronically stored information (“ESI”) and are willing to impose harsh penalties for a party’s failure to meet its duties.  Given this landscape, Chief Judge James F. Holderman of the United States District Court for the Northern District of Illinois directed the Seventh Circuit Electronic Discovery Committee to develop and implement principles to facilitate more focused and less costly discovery of ESI.  In September 2009, the Committee released its Principles Relating to the Discovery of Electronically Stored Information (“Principles”).[2] (more…)

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