OpenAI CEO Sam Altman recently warned that ChatGPT conversations are not legally protected and can be used as evidence in court. Speaking on a podcast, Altman acknowledged that OpenAI is legally required to retain user chats, including deleted ones, due to a current court order discussed later in this article. Comparing AI conversations to those with doctors, lawyers, or therapists, Altman argued that similar confidentiality protections should exist but currently do not, leaving sensitive exchanges with public AI tools fully exposed to discovery, an issue he described as needing to be addressed with urgency.

The use of AI tools like ChatGPT and Claude has created new issues for the discovery process. Lawyers must recognize that AI queries and outputs may qualify as electronically stored information (ESI) under both federal and state discovery rules. As AI technology becomes more integrated into legal practices, discovery requests are beginning to target the use of these technologies, seeking access to AI-generated documents, search histories and communication logs.

Many users may view AI tools as private assistants rather than potential witnesses. However, the use of AI tools like ChatGPT and Claude can inadvertently expose sensitive information, including legal strategies and privileged facts. Users may not realize that third-party AI platforms can be compelled to produce records during litigation, potentially compromising confidentiality and privilege. Many platforms keep detailed logs that include prompts and generated output, often tied to user accounts. Users may be surprised to learn that if they have employed these tools to draft documents or summarize confidential facts, those entries may be discoverable. This misunderstanding can create serious risks.

Several recent cases illustrate the discovery concerns associated with AI use. In some instances, AI-related ESI has been sought in discovery, challenging both privilege and work product protections. These cases highlight the importance of understanding the discovery implications of AI use and the need for protective measures. The discoverability of ChatGPT searches and their status as non-privileged information in legal proceedings may depend on the context in which the searches are conducted and the applicable privileges.

In some cases, courts have found that AI prompts and outputs, particularly when drafted by counsel, can constitute attorney work product. In Tremblay v. OpenAI, No. 23-cv-03223-AMO, 2024 WL 3748003, at *2-3 (N.D. Cal. Aug. 8, 2024), the court held that prompts created by attorneys reflected their mental impressions and opinions, making them work product rather than mere factual material. Applying that same reasoning, a California district court recently concluded that certain prompts, settings, and outputs from the Claude AI model were likewise protected, rejecting the argument that such materials were automatically discoverable. See Concord Music Group v. Anthropic PBC, 2025 WL 1482734, at *1 (N.D. Cal. May 23, 2025). The court emphasized that these materials were generated during counsel’s investigative process and therefore qualified for work product protection. However, the court also recognized that work product protection can be waived when a party relies on such materials in pleadings or motions. Here, the plaintiffs used specific prompts and outputs in their complaint and preliminary injunction filings, producing nearly five thousand prompt-output records that they relied upon. Under the “fairness principle,” this created a limited waiver. However, the court refused to extend it to all prompts, settings, and outputs, finding that discovery requests for every AI interaction were overreaching and not “closely tailored” to the opposing party’s legitimate needs nor limited to what is necessary under the fairness principle.

On the other hand, and perhaps the most sweeping example is the ongoing New York Times v. OpenAI lawsuit, which alleges that OpenAI unlawfully used millions of Times articles to train its AI models, including ChatGPT. In connection with that case, on May 13, 2025, Magistrate Judge Ona T. Wang ordered OpenAI to “preserve and segregate all output log data that would otherwise be deleted on a going forward basis,” a directive affecting hundreds of millions of ChatGPT users. See In re OpenAI Copyright Infringement Litigation (relating to The New York Times v. Microsoft, 23-cv-11195), No. 25-md-3143 (SHS) (OTW), ECF No. 551, at 2 (S.D.N.Y. May 13, 2025). OpenAI objected, arguing the order forced it to “disregard legal, contractual, regulatory, and ethical commitments” and retain up to 60 billion conversations, of which the plaintiffs estimated only 0.006% might be relevant. See OpenAI Defs.’ Supplemental Opp’n to News Pls.’ Mot. Regarding Output Logs , No. 25-md-3143 (SHS) (OTW) (S.D.N.Y. May 23, 2025), ECF No. 578. The district judge rejected those arguments, affirming the order and noting that OpenAI’s own terms of use allowed preservation for legal requirements. See Order, No. 25-md-3143 (SHS) (OTW), ECF No. 712 (S.D.N.Y. June 26, 2025). Although the court later clarified that certain categories were excluded, the case highlights how deleted AI data can become subject to preservation and discovery.

Lawyers should address these concerns and advise clients at the outset that interactions with AI tools may be discoverable and should be treated accordingly. This means instructing clients not to input privileged or confidential strategy into public or unsecured AI platforms. Clients should understand that the same caution they would apply to an email applies to AI prompts.

Further, the integration of AI tools like ChatGPT into legal practices necessitates a careful consideration of discovery obligations. Firms should adopt clear policies governing the use of AI tools for litigation tasks. These policies should address acceptable uses, data protection measures, and procedures for handling AI-generated content.

Kelly A. Lavelle is an associate at Kang Haggerty. She focuses on e-discovery and information management, from preservation and collection to review and production of large volumes of electronically stored information. Contact her at klavelle@kanghaggerty.com.

Reprinted with permission from the August 21, 2025 edition of “The Legal Intelligencer” © 2025 ALM Global, LLC. All rights reserved. Further duplication without permission is prohibited. Request academic re-use from www.copyright.com. All other uses, submit a request to asset-and-logo-licensing@alm.com. For more information visit Asset & Logo Licensing.

In the January 26, 2024 edition of The Legal Intelligencer, Kelly Lavelle wrote, “Strategies for Successful Recovery of E-Discovery Expenses.”

E-discovery has evolved into an integral component of the litigation process. With vast amounts of electronic data available, expenses associated with e-discovery can be substantial. In federal courts, the presumption is that the responding party is responsible for bearing the costs associated with discovery requests, including those related to electronic discovery. However, there are avenues through which parties can seek recovery of e-discovery expenses. Parties should understand the basis upon which courts will allow recovery of these costs and establish reasonable limits on the scope of discovery at the beginning of the litigation process. This proactive approach will allow litigants to manage and control the financial aspects of e-discovery more effectively.

The general rule is that a party producing documents pays the cost of production. However, an exception to this rule exists. Federal Rule of Civil Procedure Rule 26(c) provides parties with the possibility of cost-shifting during the course of litigation. In 2015, Rule 26 was amended to include a key change to 26(c)(1)(B). The amendment expressly confirmed the authority of federal courts to shift costs to protect parties from undue burden or expense. The advisory committee note accompanying the amendment clarified that the purpose of the change was “‘to include an express recognition of protective orders that allocate expenses for disclosure or discovery’ to ‘forestall the temptation that some parties may feel to contest’ a court’s authority to issue such orders.” It is important to note, however, that the advisory committee also cautioned against making cost-shifting a routine practice, emphasizing the need for restraint in its application.

A party seeking to shift costs under Rule 26 may do so by filing a motion with the court. The burden is on the responding party to demonstrate that the costs should be shifted. If the expenses associated with e-discovery are deemed an unreasonable burden on the producing party, a court may consider shifting some or all of the expenses to the requesting party.

Many courts have interpreted the language of Section 1920(4) as it applies to e-discovery expenses. Some courts have taken an expansive view of “making copies” and have awarded costs for TIFF conversion and project management; collecting, searching, and processing ESI; and costs related to applying date ranges, custodian filters, and deduplication. Conversely, other courts have adopted a narrower interpretation, disallowing many of the same costs. Consequently, a party seeking cost-shifting under Section 1920 must ensure that the costs align with the statutory limits. Parties often rely on invoices from e-discovery vendors to prove the expenses should be covered. However, the bills can be vague and confusing, which could lead a court either to deny cost-shifting altogether for failure to meet the statutory requirements or to create its own estimate of the costs. It is imperative for parties to meticulously review vendor invoices, ensuring a detailed breakdown of charges, as undocumented costs are unlikely to be awarded by the court.

To navigate current trends and strategies for successful cost-shifting, proactive e-discovery planning becomes crucial. Parties should engage in open discussions about the scope and cost of ESI productions, conducting a thorough early case assessment to determine e-discovery scope and estimate potential costs. Utilizing predictive advanced data analytics can further assist in evaluating the cost and relevance of ESI requests. Cooperative and good-faith negotiations between parties can streamline the e-discovery process and reduce costs. If one party unreasonably resists negotiations, there is an increased chance that a court will shift costs. When presenting the case to the court, clearly articulating reasons such as proportionality, good-faith cooperation, and the potential burden on the client will increase the chances that cost-shifting requests will be granted.

Effectively recovering e-discovery expenses through cost-shifting demands a strategic and proactive approach. Parties can significantly enhance their chances of shifting the financial burden associated with e-discovery by understanding the legal principles involved, engaging in open communication, and presenting a compelling case to the court. In cases with substantial e-discovery expenses, counsel should consider seeking advance relief under Rule 26 to either limit, share or shift vendor costs. The standards set by Rule 26 for such relief offer the court broader options than the potentially narrow interpretation of the “making copies” standard applicable to taxable costs recoverable post-judgment.

Furthermore, a comprehensive understanding of a jurisdiction’s laws governing the recovery of e-discovery expenses is crucial and should be assessed at the early stages of a case. This knowledge serves as a guide for proceeding with discovery and offers insights into potential exposure. Given the continuous evolution of technology, the significance of cost-effective e-discovery strategies, including mechanisms like cost-shifting, remains paramount. Legal professionals can effectively navigate the complexities of e-discovery and mitigate financial challenges by establishing clear guidelines, maintaining meticulous documentation, exploring innovative cost-shifting strategies, embracing technology and staying abreast of pertinent legal developments.

In the August 10, 2023 Edition of The Legal Intelligencer, Kelly Lavelle wrote “Beware of Ethical Issues in Today’s E-Discovery Landscape.“

Ethical issues in e-discovery arise due to the unique challenges and the complex nature of electronic data. The ethical challenges presented demand careful consideration and require lawyers to remain competent in emerging technology and the implications on e-discovery.

Under the American Bar Association’s Model Rules of Professional Conduct, attorneys must provide competent representation to a client. Model Rule 1.1 provides that competent representation requires the legal knowledge, skill, thoroughness, and preparation reasonably necessary for the representation. In 2012, the ABA amended this rule to highlight that an attorney’s ethical duty of competence includes a reasonable understanding of the benefits and risks associated with relevant technology. Notably, Comment 8 to Model Rule 1.1 emphasizes the need for lawyers to stay abreast of changes in the law and its practice, particularly those pertaining to technology. The comment clarifies that Rule 1.1 should be interpreted to mean that attorneys must maintain technological competence. Although the amendment did not introduce new obligations, it serves as a reminder to lawyers that they should remain aware of emerging technology as part of their ethical responsibility to remain competent.

Another important aspect of ethics in e-discovery relates to the supervision of attorneys in dealing with electronically stored information. The Model Rules of Professional Conduct impose ethical responsibilities upon both supervising and subordinate lawyers. Model Rule 5.1 provides that lawyers with direct supervisory authority must make reasonable efforts to ensure that subordinate lawyers adhere to the Rules of Professional Conduct. Supervising lawyers may be held responsible for a subordinate lawyer’s violation of the rules of professional conduct. This responsibility includes instances where the supervising attorney orders, ratifies, or fails to take remedial action when they are aware of unprofessional conduct at a time when its consequences can be avoided or mitigated.

Subordinate lawyers also have ethical responsibilities even when they act at the direction of a supervising attorney. However, Model Rule 5.2 acknowledges that a subordinate lawyer does not violate the Rules of Professional Conduct if that lawyer acts in accordance with a supervisory lawyer’s reasonable resolution of an arguable question of professional duty. In the complex world of e-discovery, partners can no longer take a hands-off approach and rely on new associates or paralegals for tasks involving electronically stored data. Attorneys may need to retain a technology expert or other consultants to aid in the process of e-discovery, which can give rise to additional ethical concerns, particularly regarding confidentiality.

The form of production of documents and electronically stored data also poses ethical considerations in e-discovery. Under Rule 34 of the Federal Rules of Civil Procedure, a producing party must produce documents in the form they are ordinarily maintained or in a reasonably usable form. This ensures that the documents are searchable or sortable by metadata fields. Further, Rule 34 prohibits simply dumping large quantities of unrequested materials onto the discovering party along with the items sought. Data dumping in e-discovery with the intention of hiding relevant information is an ethical violation. Submitting a single PDF file that contains the entire production is the electronic equivalent of a paper document dump. This results in a file that cannot be searched or sorted by metadata fields and causes undue burden upon the receiving party. It is unlikely that the original documents were kept as a single PDF file in the ordinary course of business, and the form lacks the organization and labeling required by Rule 34. Further, a single PDF file is an inappropriate and impractical form for e-discovery because of the large file size and lack of metadata. Courts have granted motions for sanctions when parties produced emails or discovery as a single PDF file, emphasizing the need for reasonable and usable forms of production.

Another paramount ethical responsibility for lawyers in e-discovery is the protection of confidential client information. Electronic discovery greatly increases the volume of information that must be reviewed for privilege. In addition, with the production of electronically stored data, there is the unique issue of possible privileged information appearing in metadata. Model Rule 1.6 governs a lawyer’s duty of confidentiality. Rule 1.6 provides that lawyers have an ethical duty to take reasonable measures to protect a client’s confidential information from inadvertent or unauthorized disclosure. However, Comment 18 clarifies that inadvertent disclosure of client information does not violate the rule if the lawyer has made efforts to prevent the disclosure.

To mitigate the risk of negative consequences arising from inadvertent disclosure under Model Rule 1.6, lawyers should carefully consider the protective measures afforded by Federal Rule of Evidence 502(d). This rule allows a federal court to enter an order known as a 502(d) order granting parties the ability to protect privileged materials from being inadvertently disclosed during the discovery process. Rule 502(d) provides that unintentional disclosure of materials protected under the attorney-client privilege or attorney work product doctrine shall not result in waiver. Unlike under Rule 502(b), a 502(d) order does not impose the requirement that the producing party took “reasonable steps to prevent disclosure” to establish nonwaiver.

In conclusion, ethical considerations are fundamental to navigating e-discovery responsibly. Adhering to ethical principles not only ensures that lawyers provide competent representation and protect client confidentiality but also signifies a commitment to staying abreast of technological advances on e-discovery. As technology evolves, lawyers must prioritize ongoing education and training to remain proficient in e-discovery practices and meet their ethical obligations.

Kelly A. Lavelle is an associate at Kang Haggerty. She focuses on e-discovery and information management, from preservation and collection to review and production of large volumes of electronically stored information. Contact her at klavelle@kanghaggerty.com.

Reprinted with permission from the August 10, 2023 edition of “The Legal Intelligencer” © 2023 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-257-3382 or reprints@alm.com.

In the June 8, 2023 edition of The Legal Intelligencer, Kelly A. Lavelle wrote “Safeguarding Data Privacy in the E-Discovery Process.“

The issue of data privacy is a growing concern as the generation and storage of electronically stored information (ESI) continues to increase. The challenges of handling digital evidence will only increase as companies expand their use of artificial intelligence (AI). In litigation, sensitive information is often involved, making data security a top priority for corporations and law firms during e-discovery. E-discovery also plays a role in internal investigations, regulatory compliance audits, shareholder disputes, and trademark infringement claims, further highlighting the importance of data protection and privacy throughout the e-discovery process.

The e-discovery process, which involves collecting, copying, and transferring data outside of an organization, raises significant concerns of data protection at every stage. ESI often contains confidential data, such as trade secrets, financial information, and personal data, and attorneys need to be aware of their obligations to protect this information and prevent unauthorized disclosure. Hacking, malware attacks, and internal security breaches can compromise ESI, leading to unauthorized access and misuse of sensitive information. Additionally, the use of ESI raises privacy concerns for individuals whose data is being collected and used in legal proceedings. Attorneys must be mindful of their client’s privacy rights and take steps to protect them.

Although ESI raises valid concerns regarding data privacy, the e-discovery process can provide significant advantages in terms of data protection and privacy. There are several steps attorneys can take to reduce e-discovery risks. First, attorneys should be well-versed in relevant privacy laws and regulations to protect their client’s privacy rights. Data privacy laws have become more abundant and complex in recent years. This year alone, five states will implement new privacy laws, representing a comprehensive approach to privacy protection across the United States. Data privacy laws such as the California Consumer Privacy Act (CCPA) and the General Data Protection Regulation (GDPR) in the European Union are already in place and impose strict requirements on the collection and disclosure of personal data. Compliance with these laws is crucial, as they can significantly affect how ESI is managed during litigation. It is critical to know where custodians are located and where data originates from to determine if any data privacy laws will affect the typical process of preservation and collection. Attorneys must be aware of their obligations and potential liability under data privacy laws.

Second, effective protocols should be established at all stages of the e-discovery process, including collection, processing, review, and production, to facilitate the retrieval and analysis of relevant data while safeguarding individuals’ privacy rights. The ESI protocol can serve as a tool to ensure the preservation and security of data privacy. Its purpose is to simplify the e-discovery process and promote efficient information exchange while ensuring data privacy and mitigating the risks of data breaches. To achieve this, attorneys need to establish the scope of discovery in a proportional and reasonable manner and balance legal discovery obligations with privacy considerations. There are several ways the ESI protocol can be utilized to safeguard data privacy during the collection, review, and production of ESI.

The ESI protocol should establish the data to be collected and how it should be processed. The primary objective is to minimize the duplication of documents and reduce the overall amount of data collected. This aligns with the requirements set forth by current and new data privacy laws which emphasize the importance of data minimization. In response to increasing regulations, companies are now required to minimize the volume of data they store and retain. However, businesses involved in litigation or reasonably anticipating litigation, tend to retain and preserve data due to concerns about being sanctioned for unintentional data deletion or a lack of knowing what issues might arise as the case progresses. Ensuring that the legal basis for collecting the ESI is clearly defined and collecting only the minimum amount of ESI necessary is the best practice. From an e-discovery perspective, data minimization is a valuable tool for reducing the costs and burdens associated with litigation.

Documenting the collection process and keeping track of how data is collected, reviewed, and preserved is essential to maintain the integrity of the evidence. Maintaining a proper chain of custody is crucial in the e-discovery process to protect data privacy. A well-defined chain of custody process helps protect data by documenting its origins and handling within the organization. It also helps identify potential tampering or unauthorized access and provides accountability. Encryption and secure transfers should be utilized to ensure the privacy and integrity of ESI during the e-discovery process.

The ESI protocol should provide guidelines for the identification and redaction of privileged data and personally identifiable information (PII). The use of AI technology in e-discovery platforms can help identify and redact confidential data while ensuring compliance with privacy laws. Privilege logs play significant roles in safeguarding data privacy during the e-discovery process. Privilege logs facilitate the balance between privacy rights and discovery obligations, allowing parties to shield sensitive or confidential information while meeting their duty to disclose relevant evidence. They establish a clear record of withheld documents or information, demonstrating efforts to protect sensitive data and comply with legal obligations.

To ensure that adequate security measures are in place, attorneys should negotiate a comprehensive protective order. Protective orders can act as an important control on how data will be transferred and accessed. The protective order should include several key provisions regarding who will have access to the ESI, implementing “clawback provisions” to prevent inadvertent disclosure of privileged documents, and establishing protocols for handling confidential and highly sensitive materials. The protective order should also establish a clear retention policy. It is essential to have provisions in the protective order for data destruction, sanitization, and confirmation of data deletion at the end of litigation. Regularly checking with clients about data removal, implementing user access controls, and timely data deletion or removal are important steps to protect data privacy. The involvement of an e-discovery vendor can help with the removal and destruction of opposing parties and third-party productions while segregating client data.

Recent court cases highlight the increasing consideration of data privacy concerns in the digital age, emphasizing the need for proper data protection measures. Addressing data privacy concerns associated with ESI is essential. By following guidelines outlined in ESI protocols and protective orders, attorneys can navigate the complexities of the discovery process while mitigating privacy risks.

Kelly A. Lavelle is an associate at Kang Haggerty. She focuses on e-discovery and information management, from preservation and collection to review and production of large volumes of electronically stored information. Contact her at klavelle@kanghaggerty.com.

Reprinted with permission from the June 8, 2023 edition of “The Legal Intelligencer” © 2022 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-257-3382 or reprints@alm.com.

Electronic discovery and its transformational consequences have been a defining feature of 21st century litigation. The sheer proliferation of data and associated complexity has necessitated the development of specialized software to manage and catalog this information. Data have become so complex that protocols surrounding metadata, i.e., data about data, have become a regular aspect of the discovery process. Agreements regarding the use and discoverability of electronically stored information (ESI) are commonplace in any case with a sufficiently large volume of documents.

Overlapping with the rise of e-discovery, and partially driven by it, has been the increasing prevalence of parties seeking protective orders. While the use of protective orders in litigation predates e-discovery, some producing parties now use the sheer volume of data available as an excuse to seek protective orders governing its disclosure. Litigants are often forced to “negotiate” protective orders and ESI protocols to jointly submit to the court. But these negotiations are a classic case of information asymmetry; the party with access to more data has a clearer idea of how to craft these agreements in its favor. Exploiting this leverage can prevent the unwanted disclosure of information that otherwise would become part of the public record.

In legal systems that value transparency, as ours tries to, court filings are the archetypal example of something falling within the public record. Some parties, however, are uncomfortable with resolving their disputes in a public forum, especially defendants who may face potential liability from future plaintiffs bringing similar suits. To avoid such transparency, a growing trend has been for parties to seek protective orders governing the use and disclosure of “confidential” information before even moving forward with the discovery process.

While the litigation process has always involved access to personally or commercially sensitive information, these concerns have multiplied in the digital age. Unfortunately, parties wishing to prolong or delay the litigation process often use their usual arsenal of tactics through raising boilerplate objections, filing responses at the last possible moment, and seeking extensions whenever available. And the use of protective orders, originally conceived as an exception to the general rule, has been weaponized by some parties as just another dilatory tactic to obstruct the litigation process. This column discusses the history of protective orders, their modern usage, and when this usage strays into the territory of abuse.

In the past, discovery would typically be filed with the court, to which the public had a presumptive right of access. See Robert Timony Reagan, ”Confidential Discovery: A Pocket Guide on Protective Orders,” Federal Judicial Center, at 2 (2012). As cases grew more complex, it quickly became unwieldy for courts to store the discovery records for every case listed on their docket. This led to the modern practice of exchanging discovery between the parties only, and attaching only relevant exhibits for the court to review.

While most discovery is no longer filed with the court, a strong presumption still exists of public access to evidence admitted at trial or considered by courts when deciding the merits of a case. This is more than just public policy underlying the discovery process; it falls within the ambit of First Amendment rights, as discussed in Seattle Times v. Rhinehart, 467 U.S. 20 (1984). There, the leader of a religious group allegedly engaged in scandalous and sensational practices sued the Seattle Times for its coverage of his church. During discovery, the Seattle Times sought information relating to the financial affairs and membership of the organization. The plaintiffs, whose very purpose for instituting the suit was to stop the allegedly defamatory coverage of their organization, obviously did not want to give the newspaper further ammunition. To prevent this, the plaintiffs sought and were granted a protective order prohibiting “publishing, disseminating, or using the information in any way except where necessary to prepare for and try the case.”

On appeal, the Seattle Times raised First Amendment grounds, arguing that there was a legitimate public interest in this information and that the protective order acted as an unconstitutional prior restraint on free speech. While the Supreme Court agreed that information obtained through discovery will almost always be protected speech, that does not mean “that a litigant has an unrestrained right to disseminate” such information. Because the rules allowing parties to obtain discovery at all “are a matter of legislative grace,” the court held that the legislature is equally free to allow protective orders governing the dissemination of this information.

The Supreme Court’s opinion in Seattle Times assuaged many of the concerns trial courts had regarding the issuance of protective orders. A decade after its issuance, the U.S. Court of Appeals for the Third Circuit analyzed the “widespread and increasing use by district courts of confidentiality orders to facilitate settlements, and the consequential sacrifice of public access to the information deemed confidential by such orders.” See Pansy v. Borough of Stroudsburg, 23 F.3d 772, 775 (3d. Cir. 1994). There, a third party-intervenor newspaper sought to obtain copies of a settlement agreement purportedly protected by a confidentiality order. Finding that the potentially untimely intervenors nevertheless had standing to challenge the confidentiality order, the Third Circuit relied on the strong public policy arguments favoring disclosure, Pennsylvania’s freedom of information laws, and the general consensus among courts that such orders should be subject to significant scrutiny.

As the Pansy court observed in 1994, “disturbingly, some courts routinely sign orders which contain confidentiality clauses without considering the propriety of such orders, or the countervailing public interests which are sacrificed …” Unfortunately, this trend shows no signs of abating, and it has become common practice for producing parties to seek protective orders limiting the public’s access to information obtained in discovery. “Umbrella” protective orders, which allow a party to designate whatever documents they see fit as confidential, are routine in many forms of litigation. While the burden is always on the party seeking confidentiality to demonstrate good cause for such a designation, these umbrella protective orders place the burden of raising such an objection on the non-producing party. See Cipollone v. Liggett Group, 785 F.2d 1108, 1122-23 (3d. Cir. 1986).

The good faith use of umbrella protective orders can legitimately improve the speed and efficiency of litigation, as it needlessly prolongs discovery if a producing party has to individually move document-by-document to designate clearly confidential records as such. This is still true in modern litigation, which can involve the production of voluminous and highly sensitive ESI. But umbrella protective orders can also be easily abused. A producing party’s wanton or excessive use of confidential designations forces their opponent to challenge these designations document-by-document. Further, a common feature of most e-discovery platforms is the ability to mass-designate a selection of documents as confidential, allowing producing parties to easily designate thousands of documents as such but forcing challenging parties to raise their objections document-by-document. While the legal burden never shifts from the producing party, litigants wishing to delay or drive up the cost of litigation can easily do so through frivolous use of confidential designations.

Of course, none of this is to say that protective orders should never be issued. There are sometimes compelling reasons that a confidentiality order should be entered, with the classic example being to protect trade secrets. See Reagan, Confidential Discovery at 7. In suits between competitors within the same industry, it is common practice for courts to allow “attorney eyes only” designations to prevent the harmful disclosure of proprietary information. Such an order prevents counsel from sharing relevant information with their own client in order to ease concerns regarding the improper dissemination of commercially sensitive documents. Further, because the metadata associated with these documents can easily track who has accessed them, such designations no longer must rely on the honor system.

Even compelling rationales like protecting trade secrets cannot justify using disproportionately broad and untethered confidentiality orders. In Smith v. BIC, 869 F.2d 194 (3d. Cir. 1989), the plaintiff, allegedly injured by a defective lighter, sought discovery regarding “design information, safety test results, and information regarding other complaints and accidents.” The defendant corporation raised the usual objections of relevance and overbreadth, but also sought a confidentiality order to protect its trade secrets. The trial court denied such an order, and BIC Corp. predictably appealed. On review, the Third Circuit found that the defendants had stated good cause for a protective order relating to trade secrets, but that the order should be limited to just those: trade secrets. Despite BIC’s contentions, records relating to other complaints and accidents were not trade secrets, and the defendants failed to state sufficient reasons that this information should be protected.

The increasing prevalence of broad, disproportionate confidentiality orders is a concerning trend, especially because they are frequently abused by producing parties (usually defense counsel) seeking to sandbag the litigation process. When handling a case involving a lot of ESI, practitioners should negotiate both ESI protocols and confidentiality (or protective) order from the very beginning of the case. Some counsel will likely insist on a very broad definition of the term “confidential material” on a protective order (e.g., insisting that anything personal or proprietary would be confidential even though, by definition, any nonpublic material is generally either “personal” or “proprietary”). Even if the negotiation process takes some time and efforts, it would be prudent to have a narrow definition of “confidential material” (e.g., limiting the definition to include only trade secrets). Protective orders were originally developed as an exception, not the norm. While e-discovery has exponentially increased the volume of discovery available, practitioners should not conflate size with sensitivity.

The Ethical Duty of Technology Competence

A lawyer’s fundamental duty has always been to provide competent representation. For years, competence included only a lawyer’s knowledge of substantive areas of the law, experience and skill to handle the representation adequately. As the times changed, and technology became more prominent in life and law, the meaning of competence expanded.

In 2012, Model Rule of Professional Conduct 1.1 was modified so that “competence” in representation includes being able to advise clients on the “benefits and risks of technology” in one’s area of the law. Since then, 31 states, including Pennsylvania, have amended their rules of professional conduct to include “technology competence” as a fundamental duty of lawyers.

The specific language used in each state’s rule governing technological competence varies. In 2014, Pennsylvania released a Formal Ethics Opinion (2014-300) titled “Ethical Obligations for Attorneys Using Social Media” in which it mandated that lawyers be aware of how social media websites operate and the issues they raise. The opinion notes that as the use of social media expands, so does its place in legal disputes, as well as the fact that most clients seeking legal advice have at least one account on a social networking site.

Without technology, emojis would not exist. Given the strength of Pennsylvania’s position on the importance of lawyers being competent in technology, particularly social media, every lawyer should be familiar with emojis and the potential issues they can cause in litigation. For litigators, an understanding of emojis and social media platforms can be critical. Not understanding these platforms can be a disservice to your clients, which can lead to discovery violations, malpractice and ethical violations. To that end, we are starting to see decisional law in this regard. See, e.g., James v. National Finance, 2014 WL 6845560, at *12 (Del. Ch. Dec. 5, 2014) (“Professed technological incompetence is not an excuse for discovery misconduct.”).

The importance of a lawyer’s understanding and depth of knowledge of emojis and social media varies based on their practice area. A lawyer who handles employment lawsuits, for example, is more likely to encounter issues involving emojis than one who handles regulatory litigation. Emojis are communications, however, and they can become an issue in any type of case. Therefore, all lawyers should have a working knowledge of emojis. As the rule of competence has proven to be elastic, it is important that lawyers be too.

Emojis Present Challenges in Discovery

Emojis can present difficulties in discovery. One such challenge is that it is very difficult to search for emojis. Given the volume of electronically stored information (ESI), parties in litigation will often agree to certain search terms to be used by the party making the production of documents as it is often not feasible to review all potentially responsive discovery to determine what should be produced. Using keywords replaces the obligation to review each document with only having to review and produce documents containing agreed on search terms. Emojis, however, at least for now, are very difficult to search for under most configurations. To produce more relevant results, many search technologies deconstruct and interpret documents and, attempt to limit junk content (e.g., spaces and punctuation). Emojis are usually part of this “junk content.” Where on survey estimates that 40 percent of data across messaging apps like iChat is emojis, this problem should not be underestimated. While this predicament is beyond that of most attorneys, e-discovery platforms are likely hard at work on a solution, as emojis present yet another business opportunity for them.

Another challenge emojis present in discovery is that their appearance is often device-specific. If the sender and recipient of an emoji are on the same platform and using the same version of the operating system (i.e., both sender and recipient are on iOS 12), then they should see the same versions of the platform’s emoji implementation. Where, however, the sender and the recipient of an emoji are not using the same platform, the sent emoji and the received emoji can be different, sometimes significantly. With this in mind, if an emoji becomes an important piece of evidence in a case, it is important for the lawyer who seeks to use it at trial to establish the operating systems of both the sender and the recipient. If the operating systems were different, the lawyer seeking to use the emoji must determine what the sender intended to send and if the sent emoji is materially different from the received one. In a world where emoji users now can choose between different races and genders (including gender neutral), the devil is in the detail, and this detail is one that should be considered.

Emojis as Evidence

With so many emojis being transmitted nowadays, it is increasingly likely they will be used as evidence in cases. The analysis of using emojis as evidence as trial is largely the same as it would be for any communication. One of the most common—if not the most common—objections to a “statement” is that it is inadmissible hearsay. In this sense, emojis are unique as they often constitute a statement, but not always. For example, depending on the context, a smiley face emoji with hearts as eyes could mean “I love you,” which is a statement. Alternatively, this same emoji could be used as a modifier of another statement it follows, indicating that the statement should be read “in a loving way.” In the latter instance, the emoji itself would not be a statement and therefore, could not be hearsay (although the statement itself could be).

Another consideration unique to emoji evidence, versus other communicative evidence, is how they should be presented at trial and published to the jury. Once a text message or other communication is determined to be admissible, it can be read aloud to a jury. In this situation, there is often no need to use a demonstrative exhibit of a long string of text. Where emojis are present, however, merely reading the text aloud is often insufficient. If a text message is read aloud to a jury and the emoji is omitted, the jurors will miss out on important context and be denied the opportunity to grasp the writer’s intent fully. Likewise, it should not be left to your opponent to explain to a jury the meaning of any emoji appearing in a communication. Each emoji is often subject to many interpretations, and even then, they are often used to mean something other than their true meaning. As such, communications with emojis being used as evidence, must be shown to a jury. If the recipient and sender of an emoji were using different platforms, it is important to show the jury what the message with the emoji looked like to each, so the jury can fairly and accurately weigh the evidence. A further discussion of this issue can be found in the matter of United States v. Ulbricht, No. 14-cr-68 (KBF), U.S. District Court for the Southern District of New York.

Conclusion

Emojis are here to stay. As is the case with many aspects of the legal profession, lawyers must be willing to adapt to changing times. Technology has brought some of the biggest changes to the practice of law and continues to do so. Lawyers should be diligent in remaining apprised of maintaining their competence in technology, which includes emojis and social media. Before you know, you and your adversary could be arguing over the true meaning of an emoji in your next case—perhaps with the assistance of expert emoji experts.

Edward T. Kang is the managing member of Kang Haggerty LLC. He devotes the majority of his practice to business litigation and other litigation involving business entities. He gave a CLE presentation titled “Emojis Speaking Louder than Words” at the 2018 Annual Meeting of National Association of Minority and Women Owned Law Firms (NAMWOLF) in Chicago, Illinois.

Kandis L. Kovalsky, an associate at the firm, focuses her practice on representing both corporate and individual clients in a broad range of complex commercial litigation matters in Pennsylvania and New Jersey state, federal and bankruptcy courts.

Reprinted with permission from the October 18 edition of “The Legal Intelligencer” © 2018 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-257-3382 or reprints@alm.com.

 The new Pennsylvania rule is different from its federal rule counterpart in that unlike the federal rule, the new rule contains no exceptions to the general prohibition against discovery of attorney-expert communications. The Federal Rules, which generally prohibit discovery of attorney-expert communications, provide for exceptions to the general prohibition if the communications relate to (1) compensation for expert’s study or testimony, (2) identification of facts or data that the expert considered in forming opinions given by the party’s attorney, or (3) identification of assumptions that were provided by the party’s attorney and were relied upon by the expert. The new Pennsylvania rule contains no such exceptions. Because the federal rules and Pennsylvania rules provide for differences in the scope of discovery of expert communications, it has been determined that the latter did not provide for such exceptions. Continuing with the more stringent approach, Pennsylvania rules do not permit an expert to be deposed, unless there is cause shown.

Creating a split amongst the legal community, there exists fear that such a stringent approach would make detection of improper behavior by experts impossible. It will be interesting to see how this new amendment will be tested.

No. 76 MAP 2012

On Appeal from Superior Court 11/23/2011 Docket

Carl J. Barrick and Brenda L. Barrick v. Holy Spirit Hospital of the Sisters of Christian Charity Individually and d/b/a Holy Spirit Hospital, Sodexho Management, Inc., Sodexho Operations, LLC and Linda J. Lawrence 

Affirming the en banc decision of the Superior Court, the Pennsylvania Supreme Court created a bright-line rule denying discovery of communications between attorneys and expert witnesses. 

It is well known the attorney-client privilege afforded to attorney-client communications gives an attorney the ability to develop theories and legal strategies with the aid of information given to him from his client. Equally as important to the ability for an attorney to strategize includes communication between the attorney and an expert witness. Pa.R.C.P. 4003 provides clear directives on what is covered as “privileged” between an attorney and her clients and witness to ensure attorneys have every ability to strategize and devise legal strategies without fear of compromising confidential information or of exposure.

In a case heard before the Supreme Court of Pennsylvania on an interlocutory appeal, Carl J. Barrick and Brenda L. Barrick v. Holy Spirit Hospital of the Sisters of Christian Charity d/b/a Holy Spirit Hospital, et al. (No. 76 MAP 2012), the Court had this very issue before it. The Court was tasked with the balancing between Pennsylvania liberal discovery rules and time-honored tradition of protecting attorney work product.  What determines the fine line between the liberal rules of civil procedure allowing discovery of just about anything that’s relevant and protecting privileged materials, especially the communications between an attorney and expert containing the attorney’s work product? The Court held that it would, “create a bright-line rule denying discovery of communications between attorneys and expert witnesses” using the language of Pa.R.C.P. 4003.3 and 4003.5 as the guiding light to determine what falls under this bright-line rule.

Carl J. Barrick brought the initial action against the Defendants after incurring serious injuries from the collapse of a chair in the cafeteria of Defendant Holy Spirit Hospital, which was under the management of Sodexho. Defendant had served a subpoena in the original action in March 2008 to Dr. Thomas Green, Barrick’s orthopedic surgeon, to obtain the records of Barrick and certain correspondence. The Defendants were supplied the documents. When Defendants requested updated records and correspondence, however, they were denied on the basis that Plaintiffs had instated Dr. Green as an expert witness. Using the language of Pa.R.C.P. 4003.3,  which states, “A party may not discover facts known or opinions held by an expert who has been retained or specially employed by another party in anticipation of litigation or preparation for trial…” Plaintiffs argued to restrict Defendants’ ability to enforce the subpoena. Defendants filed a motion to enforce the subpoena, and trial court granted the motion in favor of full discovery, and Plaintiffs appealed the decision.  The Superior Court initially affirmed the trial court’s order; however, upon Plaintiffs’ petition, an en banc panel of the Superior Court reversed the trial court, showing the complexity of the issue.

The Supreme Court acknowledge Defendants’ principal argument that a party should be able to discovery opposing party’s expert file to determine what “facts, data, assumptions or grounds” came from the expert and what came from, presumably, from the opposing party’s attorney.  In response, Plaintiffs argued “the work product privilege is not a document privilege but a thought process privilege.”   They argued the “correspondence between counsel and expert” should be protected “because it helps frame how counsel will strategize the case.”

Siding with Plaintiffs, the Supreme Court has opined that it is better to protect the attorney-expert communications, because there are other methods that opposing counsels can use to obtain discoverable information, such as through cross-examination of the witness. The Court held, therefore, “it is preferable to err on the side of protecting the attorney’s work product by providing a bright-line rule barring discovery of attorney-expert communications.”  The Court noted that a party could still obtain further expert information by “cause shown” under Rule 4003.5(a)(2), but as a general rule the communications between an attorney and his expert are not discoverable.

With the holding from the Supreme Court, it is clear that an attorney has tight control over what can be produced to opposing counsel in reference to the attorney’s communications with his experts.  Given that a party may still discover the communications between opposing counsel and his expert by showing “cause” under Rule 4003(a)(2), every lawyer should still use caution when talking to her expert.

Today, email servers, contact information, handheld devices, and computer devices continually change overnight from company to company, making it difficult to maintain control over the flow of information.  The lawyers at Kang Haggerty can help you create policies and institute best practices procedures to ensure the proper preservation of your data.  And, should you find yourself on either end of a lawsuit, the lawyers at Kang Haggerty can assist in obtaining or complying with a litigation hold order.