The web is a rich, varied, yet essentially untapped data source. Are you making full use of it in your eDiscovery?
People today live their lives in full view on the web, from social media and messaging apps to chatrooms and discussion boards. And business happens on the web, from a company’s own website to its Twitter and Instagram feeds. But all too often, when it comes time to engage in discovery, companies overlook the evidence that they might find online, sticking to tried-and-true evidentiary sources and never asking what exists on the web. And sure, that can be successful enough—but it can also mean missing out on the interesting or even dispositive data that you could find if only you got yourself far enough outside the standard ediscovery box to look for it.
Recently, we saw a case that highlighted this sort of creative evidence-gathering and recognized the power of the web as a data source. Let’s take a closer look at In re Ex Parte Application of Levi Strauss & Co.
In the early 2000s, Levi Strauss & Co., the company behind the iconic Levi’s jeans, filed a trademark infringement lawsuit against New Yorker, a European clothing company. Levi argued that New Yorker was selling knockoff jeans that bore its trademarked Arcuate stitching pattern.
See video here. Video Credit: Levi Strauss
Technically, Levi was successful: it reached a settlement with New Yorker in 2006, in which New Yorker agreed that it would no longer use “stitching similar to the Arcuate trademark.” In re Ex Parte Application of Levi Strauss & Co., No. 18-mc-80123-JSC (N.D. Cal. Aug. 15, 2018). New Yorker also agreed that it would pay a penalty—50 euros per garment—if it did use the infringing stitching.
But Levi’s initial success didn’t do it much good. New Yorker repeatedly violated the agreement, continuing to sell jeans with Levi-like stitching. Levi first complained of violations in 2010, at which point the court in Brussels, Belgium—where the dispute was heard—awarded it a provisional judgment of 1,250,000 euros.
You’d think that would be enough to encourage New Yorker to find other stitching patterns, but apparently not. In 2014, Levi again filed an action in Belgium, claiming that “yet another of New Yorker’s stitching designs violated the 2006 agreement.” Again, the Brussels court agreed with Levi. To determine the appropriate damages award, the court appointed an expert to assess how many infringing pairs of jeans New Yorker had sold. Belgian law allows that “the parties may submit to the expert any information that they believe would be helpful to the expert’s mission.”
Sounds straightforward enough, right? You’d think so—but unfortunately for Levi, you’d be wrong.
New Yorker told the expert that only one of its styles of jeans bore an infringing stitch pattern and that it sold a grand total of 3,507 pairs of that style. Perhaps proving that its number was a lowball estimate, although the Belgian “expert has attempted to obtain information from New Yorker regarding its sales since 2006,” New Yorker didn’t turn over any supporting evidence.
Levi wasn’t having it; it suspected that the true number of infringing pairs was in the millions instead, but had no evidence to prove that assertion.
Running out of options, Levi turned to the Wayback Machine, operated by the Internet Archive, to view past versions of New Yorker’s website. When it got there, though—surprise, surprise—it found only an error message indicating “This URL has been excluded from the Wayback Machine.” It turns out that this isn’t hard to do; the court confirmed that “an individual or other entity can request that a site be excluded from the Wayback Machine.”
Levi didn’t give up, though. It filed an ex parte application seeking to take discovery from the Internet Archive, a non-party in the foreign judicial proceeding, for use in the original case. Specifically, it requested:
In this opinion, the court granted Levi’s motion, ordering the Internet Archive to answer all three inquiries.
Levi relied on 28 U.S.C. § 1782, which states that
The district court of the district in which a person resides or is found may order him to give his testimony or statement or to produce a document or other thing for use in a proceeding in a foreign or international tribunal.
Such an order may follow “upon the application of any interested person.” The court noted that “a litigant in a foreign action qualifies as an ‘interested person’” for purposes of Section 1782. Levi was therefore entitled to make the request.
As to whether it should grant that request, the court pointed out—as courts love to do—that the rule gives the court “wide discretion to grant discovery” as it sees fit. In applying its discretion, a court should consider four factors:
However, the information sought need not be strictly discoverable under either the law of the foreign jurisdiction or the United States.
In addition to those four factors, the court considered “the twin aims of [Section] 1782: providing efficient assistance to participants in international litigation, and encouraging foreign countries by example to provide similar assistance to our courts.” Clearly, then, Section 1782 is designed to allow necessary discovery without stepping on anyone’s toes or sparking an international kerfuffle about intrusive or overbearing discovery.
Here, the court found that Levi’s “application satisfies the minimum requirements of Section 1782.” Because the Internet Archive is based in San Francisco, the Northern District of California was the appropriate court to hear Levi’s request. The pending Belgian cases “are proceedings before a foreign tribunal,” making the rule applicable. As a party to the underlying cases, Levi had a “‘reasonable interest’ in obtaining judicial assistance” for them. Additionally, the discovery sought was “an acceptable method of requested discovery under Section 1782,” giving the court the power to grant the relief sought.
The court then turned to the discretionary factors to weigh the merits of Levi’s request. It pointed out that the Internet Archive was “not a party to the Belgian actions,” and as such, “discovery regarding its records is unattainable absent Section 1782(a) aid.” Because the Belgian expert had been utterly unsuccessful in gathering any information about New Yorker’s sales and Levi was entitled to assist that expert, it “appears that the Belgian court would be receptive” to receiving the information. Nor did the court find any indication that Levi’s request was an “attempt to circumvent proof-gathering restrictions” in the Belgian court.
To top things off, the court held that the requested discovery “does not appear to be unduly burdensome and appears to be appropriately tailored.” Should that turn out not to be the case, of course, the Internet Archive maintained the option to object to the subpoena or move to quash it.
Therefore, the court granted Levi’s application, issuing a subpoena to the Internet Archive and ordering it to report whether New Yorker requested that its website or web history be excluded from the Wayback Machine and to provide copies of any existing website history.
This case highlights the potential usefulness of the web as an evidentiary motherlode. While Levi might not be able to ascertain the exact number of infringing pairs of jeans sold, access to archived versions of New Yorker’s website could at least prove that it sold more than one infringing style. And with proof of that misrepresentation, the Belgian court might be convinced to disregard the rest of New Yorker’s proffered evidence.
Let’s take a quick detour to point out another important lesson from Levi: as useful (and entertaining) as the Wayback Machine is, it’s not a reliable source of forensic evidence. Website owners can have their sites excluded from its web-crawler—or the crawler might have never noticed that a site exists, preventing it from being collected. The Wayback Machine also doesn’t crawl sites every day or even every time they’re changed, and it can’t access information that exists behind a login screen, such as most information from social media sites.
But moving on from the shortcomings of the Wayback Machine, what discoverable evidence—or even just helpful information—might you find if you start critically examining the web as a potential source? Perhaps a plaintiff in a product liability case has participated in chatrooms discussing how to get a big payout by accusing a company of wrongdoing. Or maybe there’s evidence that you were using a logo or a product design long before the company accusing you of stealing its intellectual property started using it. And then there’s social media evidence, which can turn out to be a smoking gun in all kinds of cases.
There is, in short, a treasure trove of discoverable data to be found on the web. Don’t miss out on it just because finding and gathering it seems too difficult.