Parties conduct electronic discovery often by using
search terms or keywords to locate relevant information during litigation. With
the advent of electronic discovery, courts must now answer the question of
whether the search terms used in performing that electronic discovery
are discoverable as well. Relatedly, should such terms be considered
work-product, and thus not subject to discovery? Though as of yet there is no
definitive answer from our courts, valid arguments can be made for treating
search terms as work product, as well as for treating them as relevant,
non-privileged information that should be produced.
Search terms may certainly be "relevant to any party's
claim or defense" pursuant to Federal Rule of Civil Procedure 26(b)(1).
Under this rubric alone, it would appear search terms should be discoverable,
because they indicate which individuals and events are considered important to
any particular facet of a claim or defense. However, are they "prepared in
anticipation of litigation or for trial by or for another party or its
representative"? If they were, then according to FRCP 26(b)(3)(A), this would
render them protected from discovery.
Is it how the search terms are being used that makes the
difference? For instance, search terms may be used by counsel to conduct
further factual investigation, to determine whether the use of certain terms
would retrieve a set of documents that is too broad or too narrow, or to
establish which documents may contain privileged information. These uses of
search terms create a much stronger argument for work-product protection than
situations in which terms are being used solely to cull information ordered for
In Romero v. Allstate Ins. Co. [an enhanced version of this opinion is available to lexis.com
subscribers], the Eastern District of Pennsylvania found that the
search terms involved did not fall under the protection of the work-product
doctrine, stating instead that the terms related to facts and that
"[p]rotection of the privilege extends only to communications and not to
facts." 271 F.R.D. 96, 109-10 (E.D. Pa. 2010) (citing Upjohn Co. v. United States, 449 U.S. 383, 395-96
(1981) [enhanced version]). The court stated that the search
terms related to the "underlying facts of what documents [were] responsive to
[the plaintiff's] document requests and [did] not delve into the thought
processes of [the defendant's] counsel." Id. at 110.
The Northern District of California also recently
rejected one plaintiff's argument that the disclosure of search terms would
reveal privileged information. FormFactor, Inc. v. Micro-Probe Inc., Case No.
C-10-03095 PJH (JCS), 2012 U.S. Dist. LEXIS 62233 (N.D. Cal. May 3, 2012) [enhanced version]. In so doing, the FormFactor court
reasoned that the terms at issue were relevant to the "underlying facts of what
documents [were] responsive to [the defendants'] document request, rather than
the thought processes of [the plaintiff's] counsel." Id. at *19-20 n.4. The
court cited Doe v. District of Columbia [enhanced version] for the proposition that Rule
26(b)(1) "can be read to allow for discovery of document production policies
and procedures and such information is not protected under the work product
doctrine or attorney-client privilege." Id. (citing 230 F.R.D. 47, 55-56 (D.D.C.
The same district court's other recent decision in Apple Inc. v. Samsung Electronics Co., LTD. is even
more indicative of its hesitancy to protect search terms from disclosure. Case
No. 12-CV-0630-LHK (PSG), 2013 U.S. Dist. LEXIS 67085 (N.D. Cal. May 9, 2013) [enhanced version]. The magistrate judge ordered
Google, a third-party to the litigation, to produce the search terms it used in
responding to Apple's request for production. The court cited traditional
principles of transparency and collaboration in discovery and stated that such
tenets apply not only to parties to the litigation, but to non-parties as well,
mandating Google's production of the terms used. Id. at *42-44 (citing DeGeer v. Gillis, 755 F. Supp. 2d 909 (N.D. Ill.
2010) [enhanced version]).
These notions of cooperation in the discovery process may
perhaps form the basis for other similar decisions. See Romero, 271
F.R.D. at 109-10. Some litigants assert that if search terms are not produced,
it is impossible to tell whether an opposing party has satisfied its discovery
obligations. In FormFactor, for example, the Northern District of
California noted that there was "simply no way to determine whether [the
plaintiff] did an adequate search without production of the search terms used."
2012 U.S. Dist. LEXIS 62233 at *20-21 n.4, see also Smith v. Life Investors
Ins. Co. of Am., 2:07-cv-681, 2009 U.S. Dist. LEXIS 58261, at *20 (W.D. Pa.
Jul. 9, 2009)(ordering production of search terms despite claim of work-product
and citing defendant's burden to demonstrate its search was reasonable).
On the other hand, it is arguable whether that concern
should be sufficient to require the affirmative disclosure of search terms in
every case. While it seems that at least some courts will not hesitate to find
that search terms are not work-product, perhaps the question of disclosure is
one that should be decided on a case by case basis-that is, by a judge who is
in the best position to ascertain whether insufficient cooperation with
discovery obligations is a risk in a given scenario. At any rate, until more
definitive rulings are issued-which may not be far off, as e-discovery matters
become increasingly litigated-a case-by-case assessment is likely the best
approach. Additionally, parties can streamline the process themselves by
stipulating to search terms and keyword searches prior to seeking intervention
from the court.
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