[EDRM Editor’s Note: The opinions and positions are those of Michael Berman.]
That is what makes the recent decision in M1 Holdings, Inc. v. Members 1st Fed. Credit Union, 2024 WL 182220 (N.D. Ill. Jan. 17, 2024), interesting. Both of the disputing litigants were ordered to state under oath that they had produced all responsive documents in a decision in which the court granted in part and denied in part a motion to compel.
Substantively, the litigation involves a trademark dispute between M1 Holdings and Members 1st over two similar logos – “M1” and M1st.”
Noting the similarity, the court wrote: “So it is perhaps a bit surprising that Members 1st (‘M1st’) has produced thousands and thousands of pages of documents in the five categories of documents M1’s motion is about – and continues to produce documents – but M1 thinks there must be more documents, [and] wants – or wanted – them faster.”
So, the disconnect between ‘we sent you everything we can find’ and ‘here’s some more stuff we found’ seems to be what this five-brief, four-hundred-page… squabble is all about.
M1 Holdings, Inc. v. Members 1st Fed. Credit Union, 2024 WL 182220 (N.D. Ill. Jan. 17, 2024).
M1 filed multiple briefs in a motion to compel that, in the court’s words, was “all about what seems to be a rather routine discovery matter in what should be a fairly simple case about two fairly simple marks.”
The court wrote: “M1 is pretty heated about [the discovery dispute], going so far as to accuse M1st’s lawyers of lying when they repeatedly say that they produced ‘all the documents they had located to date.’” The perceived problem was that, after M1st made that statement, it later produced more documents.
The court – perhaps a bit tongue in cheek – wrote: “Well, when M1st would then produce more documents thereafter, M1 took that as demonstrating M1st had not actually done a reasonable search. After all, if you find more documents after you claim to have done your best, then you hadn’t really done your best, had you?”
However, the court added: “But isn’t that what ‘to date’ means? And do not parties have an obligation to supplement their document production when necessary?”
The court explained: “So, the disconnect between ‘we sent you everything we can find’ and ‘here’s some more stuff we found’ seems to be what this five-brief, four-hundred-page… squabble is all about.” [emphasis added].
It then stated:
Frankly, it’s all a bit much and, to borrow from Fed.R.Civ.P. 26(b)(1), it’s all a bit out of proportion to the needs of the case, considering the issues at stake. When parties to a discovery battle get to the point of having filed five briefs, the back-and-forth, we-said-they-said becomes confusing but, because M1 and M1st can’t seem to agree on what a rolling production is, the court will have to attempt to sort their rather confusing and contradictory tales. As already noted, M1 breaks its motion down into five categories of documents, which seem to be, to a fair degree, somewhat peripheral to what one might think should be the heart of a trademark case.
M1 Holdings, Inc. v. Members 1st Fed. Credit Union, 2024 WL 182220 (N.D. Ill. Jan. 17, 2024).
The court proceeded to rule on all five categories, noting that the parties presented “moving targets” and were “vague, perhaps deliberately so.”[1]
In part, in doing so, the court ordered that M1st provide a sworn statement. For example, as to one category of requested documents:
But, M1 says it wants M1st to provide a sworn statement that, after a search of its hard copy and digital records (including email), M1st has produced all documents in Category 1 in its possession, custody, or control…. While “[o]rdinarily the representation of the responding party’s attorney that no additional documents exist is sufficient to defeat a motion to compel absent credible evidence that the representation is inaccurate,” [citation omitted], courts do order such Declarations once in a while. [citations omitted]. Here, I am not entirely convinced in M1’s position in terms of degree of relevance and proportionality with the importance of the issues in this case. But, as courts throughout the Nation have repeatedly recognized, people do tend to send a lot of emails. [citation omitted]. This case seems to be one of those “once in a whiles.” M1st will complete production in this category and either provide a sworn statement that it has produced all documents in this category or that it is holding back documents and why no later than February 28, 2024.
M1 Holdings, Inc. v. Members 1st Fed. Credit Union, 2024 WL 182220 (N.D. Ill. Jan. 17, 2024).
In short: “M1st is ordered to complete production and produce a sworn statement that it has produced all responsive information, and address the specific points for the pertinent categories discussed above by February 28, 2024.”
Given the nature of the dispute, however, the court did not stop there: “For good measure, M1 is also ordered to complete production by February 28, 2024, and to produce a sworn statement that it has produced all responsive information.” [emphasis added].
The court then denied M1’s request for fees and costs:
What probably needs to happen here is that the temperature of this case needs to cool a bit. While it is not quite at fever pitch, it is spiking a bit too high. One cannot get too angry about the pace of production when one agrees to production on a rolling basis and is still producing documents oneself. Moreover, not every piece of discovery is “highly relevant.” Not every discovery dispute is a matter of such grave consequence that it must be conducted along the lines of Napoleon’s retreat from Moscow. To use a well worn phrase, M1 has not begun scorching the earth in this case, but the tenor of its motion and supporting submissions leads one to believe it has the torches at hand and is willing to light them. [2]
M1 Holdings, Inc. v. Members 1st Fed. Credit Union, 2024 WL 182220 (N.D. Ill. Jan. 17, 2024).
Clearly, there were problems with the parties’ approach to discovery. Part of the problem was the qualification that M1st had produced what it had found “to date.” The court wrote:
M1 doesn’t believe M1st and really doesn’t like the M1st qualification, “located to date.”… No documents responsive to this category were part of the November 17th production, so perhaps M1st’s [sic] allegations are accurate. And, M1st did hedge its bets by saying “to date.” M1st’s “to date,” cannot and should not be interpreted to mean that M1st will comply with its statutory obligation to continue its search and properly supplement its responses as required by Rule 26(e). See Fed.R.Civ.P. 26(e)(1) (requiring a party to supplement or correct a prior incomplete or incorrect response in a timely manner). [emphasis in original].
M1 Holdings, Inc. v. Members 1st Fed. Credit Union, 2024 WL 182220 (N.D. Ill. Jan. 17, 2024).
Every practicing attorney has seen “to date” qualifications in discovery responses. However, Fed.R.Civ.P. 26(g) provides that, by signing a discovery “response,” the attorney certifies “that to the best of the person’s knowledge, information, and belief formed after a reasonable inquiry… with respect to a disclosure, it is complete and correct as of the time it is made” and it is not interposed to “cause unnecessary delay….” [emphasis added].
Rule 34(b)(2)(A) requires a response to an RPD within 30 days. Subsection (B) states: “For each item or category, the response must either state that inspection and related activities will be permitted as requested or state with specificity the grounds for objecting to the request, including the reasons. The responding party may state that it will produce copies of documents or of electronically stored information instead of permitting inspection. The production must then be completed no later than the time for inspection specified in the request or another reasonable time specified in the response.” [emphasis added]. Subsection(C) states that, if there is an objection, it “must state whether any responsive materials are being withheld on the basis of that objection. An objection to part of a request must specify the part and permit inspection of the rest.” Further, under Subsection (E), if the request is for ESI, “[i]f the responding party objects to a requested form–or if no form was specified in the request–the party must state the form or forms it intends to use.”
In short, the “to date” qualification presents issues under Rule 26(g) and Rule 34.
Another issue was inaccurate statements. The court wrote: “So, M1st’s position is that there wasn’t much to produce. But that wasn’t the case. Since the motion to compel has been fully briefed, M1st has produced over 500 pages of materials from the 206 Design Litigation, and it doesn’t have much of an excuse, other than it didn’t find them in its first go-round.”
But the problems were not entirely on M1st’s side of the “v.” Another problem described by the court was: “If [some of the emails M1 demanded] were highly relevant, M1 would have surely cited a case or two saying so. But, they have not. Indeed, M1’s motion to compel is almost devoid’ of any pertinent authority to support its arguments.” The court found that omission “fatal.”
Ideally, when asking for relief, a party should direct the court to docket entries and pages necessary to support its contentions, rather than leaving the court to sift through filings on its own. Courts do not act and should not be requested to act, in effect, as archaeologists and do the work counsel should have done.
M1 Holdings, Inc. v. Members 1st Fed. Credit Union, 2024 WL 182220 (N.D. Ill. Jan. 17, 2024).
Similarly, there was a failure to provide pinpoint, or “PIN,” cites. The court wrote: “Ideally, when asking for relief, a party should direct the court to docket entries and pages necessary to support its contentions, rather than leaving the court to sift through filings on its own. Courts do not act and should not be requested to act, in effect, as archaeologists and do the work counsel should have done.”
One issue was that the rolling productions continued while the motion to compel was pending. This created what the court called “moving targets.” For example, the court wrote: “But, we are not given a date for completion except we are told it will be fairly soon. And that is manifestly insufficient by any fair measure.” Under Fed.R.Civ.P. 34(b)(2)(B): “The production must then be completed no later than the time for inspection specified in the request or another reasonable time specified in the response.”
Another problem was animosity. The court wrote: “M1st takes the opportunity to take a shot at M1, accusing them of being blasé about confidentiality…. It’s probably to be expected when the other side wants you to swear you’re not lying.”
One last issue was likely important. The court found M1’s “oft-repeated” and “conclusory” assertions that the discovery at issue is “highly relevant” to be unhelpful. The court wrote that “not every piece of discovery is ‘highly relevant.’” Hyperbole seemed to characterize much of this dispute.
My concern is with the requirement for a sworn statement. What are the mechanics of it?
If the sworn statement is from the attorneys, I have two questions.
First, what will a sworn statement add to the certification provision of Fed.R.Civ.P. 26(g)(1)(B)? Under Rule 26(g)(3): “If a certification violates this rule without substantial justification, the court, on motion or on its own, must impose an appropriate sanction on the signer, the party on whose behalf the signer was acting, or both. The sanction may include an order to pay the reasonable expenses, including attorney’s fees, caused by the violation.”
Second, why are attorneys becoming something akin to witnesses? The Advisory Committee Note to the 1983 Amendment to Rule 26(g) states: “Rule 26(g) does not require the signing attorney to certify the truthfulness of the client’s factual responses to a discovery request. Rather, the signature certifies that the lawyer has made a reasonable effort to assure that the client has provided all the information and documents available to him [or her] that are responsive to the discovery demand.” The Note states;
The duty to make a “reasonable inquiry” is satisfied if the investigation undertaken by the attorney and the conclusions drawn therefrom are reasonable under the circumstances. It is an objective standard similar to the one imposed by Rule 11. See the Advisory Committee Note to Rule 11. See also Kinee v. Abraham Lincoln Fed. Sav. & Loan Ass’n, 365 F.Supp. 975 (E.D.Pa.1973). In making the inquiry, the attorney may rely on assertions by the client and on communications with other counsel in the case as long as that reliance is appropriate under the circumstances. Ultimately, what is reasonable is a matter for the court to decide on the totality of the circumstances.
M1 Holdings, Inc. v. Members 1st Fed. Credit Union, 2024 WL 182220 (N.D. Ill. Jan. 17, 2024).
Alternatively, if the sworn statement is from a client/litigant, how does a lay person determine what is “responsive” to a discovery request and can a lay person reasonably be asked to do so? See Fed.R.Civ.P. 26(b).
However, the court provided an avenue for clarification. It concluded its memorandum by stating: “A final note. If there are other or unanswered issues, they can be discussed at the hearing on January 18, 2024.”
Notes
[1] For example, M1 asserted that there should be more emails and M1st seemed to suggest that it had produced 256 emails. The court wrote: “That might be a lot, or it might be a little. How many emails should there be between a Pennsylvania credit union and a Harrisburg marketing firm discussing how to position an ‘M’ and a ‘1st’ in the credit union’s logo? Both sides are vague, perhaps deliberately so.”
[2] M1 pushed pretty hard. For example, as to a second category of documents subject to M1’s motion to compel, the court wrote that “M1 concedes that it overreacted regarding documents in this category and ‘confirms that M1st appears to have made a good faith effort to produce responsive documents in Category 2.’…. Nevertheless, it still wants the court to order M1st to provide a sworn declaration as to this category.” [emphasis in original].
