An ESI Protocol is Not a Shield Against Discovery Obligations – Is There a Duty to “‘Fess Up” – Part III

Plaintiff’s argument that an ESI Protocol limited its discovery obligations was squarely rejected in CR Legal Team, LLP v. Carruthers & Roth, P.A., 2026 WL 3135943 (M.D. N. Car. Oct. 20, 2026). It was insufficient for Plaintiff to confine its search to seven terms provided by Defendant. The search terms provision of the ESI Protocol did not supersede the Plaintiff’s obligations under the Rules.  The duty to produce is nondelegable.  This issue could have been avoided by a clause in the ESI Protocol that is discussed below.

CR Legal is a trademark dispute between two law firms that both use marks that display the letters “CR.” The motion discussed here is defendant’s motion to compel.

In its requests for production of documents, the defendant sought, inter alia, 1) emails and documents regarding the plaintiff’s decision to rebrand from Crumley Roberts to CR Legal Team; 2) the plaintiff’s marketing expenditure by geographic area; and 3) the plaintiff’s agreements with advertising agencies and outlets who assist in promoting the accused CR Legal Team mark.

The court wrote that Plaintiff’s rebranding was a central issue and the Defendant’s discovery went to that issue.

However: “In response to these requests, the plaintiff produced one email thread, which announced the name change, but explained that no other documents exist to the best of their knowledge and based on a reasonable search.” Id. at *4 (cleaned up).

While there were other discovery issues, as related to the ESI Protocol: “The plaintiff only searched for emails that contained the defendant’s provided search terms….”  In making that decision, Plaintiff relied on a Protocol provision that stated:

The parties shall each be permitted a reasonable number of document requests that seek the production of emails containing specific search terms…. In addition, the parties agree to meet and confer on the number of search terms and number of individuals whose email documents are to be searched taking into account the stated rationales of such searches and the proportional need of the searches to the needs of the litigation.

The court wrote that: “The plaintiff argues that this protocol limited email discovery solely to ‘emails containing specific search terms.’” [emphasis in original].  As such, Plaintiff ran only seven search terms, “taking no further steps to produce emails relevant to the discovery request.”

Unsurprisingly, the Defendant disagreed:

[D]efendant argues it “never agreed that Plaintiff’s search and produce obligations were limited to ESI search terms.” …. Instead, the defendant views the ESI Protocol as a tool that works in tandem with broader discovery obligations under the Federal Rules of Civil Procedure.

Defendant had the far stronger position, with the court writing:

The plaintiff’s use of the ESI Protocol as a shield from its discovery obligations misses the forest for the trees. The ESI Protocol does not eliminate the plaintiff’s “affirmative duty [under Rule 34] to seek that information reasonably available to [it] from [its] employees, agents, or others subject to [its] control.’ ” See Gray v. Faulkner, 148 F.R.D. 220, 223 (N.D. Ind. 1992) (citation omitted); In re Camp Lejeune Water Litigation, No. 7:23-CV-897, 2024 WL 1080988, at *3 (E.D.N.C. Mar. 12, 2024) (holding that an ESI Protocol “complements but does not supersede” Rule 34 obligations). Indeed, “an ESI protocol and search terms work in tandem with the parties’ obligations under the Federal Rules and do not replace a party’s independent obligation to produce electronic (or paper) documents that are reasonably accessible, relevant, and responsive within the meaning of Rule 34.” Raine Grp. LLC v. Reign Capital, LLC, 21-CV-1898 (JPC) (KHP), 2022 WL 538336, at *1 (S.D.N.Y. Feb. 22, 2022). Consequently, a party “cannot justify failing to collect obviously relevant documents on the ground that the relevant employee was not designated as an ‘ESI custodian’ or that such documents might fall outside an agreed search-term workflow.” Wilson Aerospace LLC v. Boeing Co. Inc., No. C23-847-JHC-MLP, 2026 WL 2069870, at *2 (W.D. Wash. July 17, 2026).

The court reasoned:

Here, the ESI Protocol “permits” the parties to request “the production of emails containing specific search terms,” but it does not serve as the sole means of satisfying requests for email production…. Therefore, the plaintiff must not limit its search for responsive emails solely to those that appear when using the defendant’s requested search terms.

Id. at *5-6 (emphasis added).  The court’s order stated:

For the foregoing reasons, the Court orders the plaintiff to produce all relevant documents and communications regarding the first use of the name CR Legal Team, as well as the decision to rebrand, and implementation of the rebrand, from Crumley Roberts to CR Legal Team. The Court further orders that CR’s review for these documents shall include the searches of all email addresses, both professional and personal, that Christopher Roberts and Kimberly Roberts used, and orders that the work emails of all of the plaintiff’s attorneys in Greensboro be searched. These email searches are not limited to the ESI search terms that the defendant requested. Additionally, the Court orders the plaintiff to produce its ESI retention policies, to the extent they exist. Finally, if the plaintiff can produce no additional documents about the rebrand, it must provide the defendant with an attestation, sworn under oath, that no other documents exist regarding the rebrand.

Id. at *6.

I addressed this issue in greater depth in Is There a Duty to “’Fess Up?” – Part II (Nov. 12, 2022).  One court wrote: “Defendant had an independent duty to produce key relevant requested discovery even if plaintiff did not specifically list the precise ESI wording or spelling in its list of search terms. Defendant may not delegate to plaintiff the duty to identify its relevant requested documents.” [emphasis added].

In An ESI Protocol Does Not [Necessarily?] Supersede the Discovery Rules (Jul. 25, 2026), I quoted a decision stating: “In matters involving electronically stored information, parties may employ custodian-based collections, agreed search terms, and other tools referenced in their ESI protocol to implement their Rule 34 obligations. But these tools do not narrow or override the Federal Rules.”

In that case, the ESI Protocol stated in part: “Where appropriate, relevant and responsive non-privileged documents and ESI that are easily identifiable and segregable shall be collected and produced without the use of the procedure described herein. The discovery requests (in accordance with and subject to any limits or objections supported by the Federal Rules of Civil Procedure, the Local Rules, and any relevant orders of the Court) shall govern the scope of documents and ESI to be produced, subject to any agreements reached during the parties’ conferral, and otherwise search terms do not supplant discovery requests. The parties shall produce any relevant and responsive, non-privileged documents, to the extent they exist and can be located after a reasonably diligent search of relevant custodians and shared platforms, upon which the parties shall meet and confer.” [emphasis added].

That clause would likely have avoided this dispute.

This blog was initially posted on  Electronic Discovery Reference Model.