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ELECTRONIC DISCOVERY

An analysis of the 2009 amendment to the Rules of the Superior Courts and comparison with the English Civil Procedure Rules

WILLIAM ABRAHAMSON

In 2007, an English High Court Judge interrupted the trial of three men charged with internet-based terrorist offences to say that he was having difficulty grasping some of the concepts involved: “The trouble is I don’t understand the language. I don’t really understand what a website is.” Both the courts and the rules committees have been characteristically slow to embrace modern technology in this jurisdiction. This causes real problems in an age where vast amounts of information are transmitted and stored electronically. In particular, significant difficulties can arise where a party seeks access to information from an opponent which is stored electronically. Such information can range from a simple exchange of emails to a complicated IT storage system containing millions of potentially relevant files. Can such information be discovered? If so, how are relevant documents to be identified and how are they then to be inspected by the applicant? The purpose of this paper is to examine changes to the Rules of the Superior Courts introduced in 2009 which deal with discovery of electronically stored information (“ESI”). There will also be a comparative analysis of the English Civil Procedure Rules, which provide a much more detailed regime for the discovery of ESI. A brief historical note Since it first appeared as a procedural mechanism in civil litigation, discovery has always been a means to obtain access to, or information about, ‘documents’. Rules similar to those we use today first appeared in 1905 when the Rules of the Supreme Court (Ireland) were introduced under the Judicature Act (Ireland) 1877. Those rules provided for discovery in terms practically identical to the provisions of the modern Rules of the Superior Courts (“RSC”) as they were introduced in 1986. Even earlier, the Chancery Procedure Act 1852 and the Common Law Procedure Act 1854 provided for discovery of documents. While the language of the rules effectively remained constant for over a century, their interpretation evolved as society and business – and, therefore, litigation – changed. In particular, the notion of what constitutes a ‘document’ has developed from a very narrow definition to a much broader concept. However, the change in the courts’ attitude was considerably slower than that in the world outside. In the early twentieth century, the courts considered that a document had to be something in writing1 and in the 1950’s the Irish High Court refused to permit discovery or an x-ray because it was

                                                                                                               1 E.g. R v. Daye [1908] 2 K.B. 330.

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not “a written thing”.2 It was not until the late 1970’s that the Irish courts reversed that approach and held that an x-ray is a document because it is “something which gives information”.3 This evolution of approach essentially represented a move from a form-based definition of ‘document’ to one which emphasised the function of the item in question. Yet despite seismic shifts in the latter part of the twentieth century in the way in which information is held and communicated, it was not until 2005 that an Irish court formally recognised that discovery of electronic records could be granted.4 The Cresswell Report In 2004 in England, a working party chaired by Cresswell J. reported on “the particular problems thrown up by the disclosure of emails and other electronic documents”. That report identified a number of problems which were arising in relation to electronic discovery:

(1) A huge volume of documents is created and stored electronically.

(2) Electronic documents are more easily duplicated than paper

documents.

(3) There is often a lack of order to the manner in which electronic documents are stored.

(4) There are different retention policies operating in different

companies.

(5) Electronic documents contain “metadata”, which is information about the document such as the date of its creation and modification and the identity of the persons who created or modified it.

(6) Electronic documents are more difficult to dispose of than paper

documents. Deleting an electronic file does not necessarily erase the data from the computer.

The Creswell Report went on to identify five stages a party had to go through to comply with disclosure obligations in relation to ESI:

(1) identify how many of the documents which might be relevant to the case have been created by electronic means;

                                                                                                               2 Lynch v. Fleming [1953-1954] Ir. Jur. Rep. 45. 3 McCarthy v. O’Flynn [1979] I.R. 127. 4 Mulcahy v. Avoca Capital Holdings Ltd [2005] IEHC 136.

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(2) identify whether these electronic documents have been preserved and where they might be stored;

(3) retrieve, and search for, any relevant electronic documents; (4) conduct a review of the electronic documents; and

(5) produce the electronic documents, ideally, in an agreed format.

The Report concluded that the existing Civil Procedure Rules (“CPR”) provided adequate guidance to litigants regarding electronic discovery. The Report stated:

“It would be both undesirable and impracticable to produce any formal rules or checklist that would circumscribe the proper exercise, on the facts of each case, of that test of reasonableness and proportionality [contained in the CPR discovery rules].”

Some years later, a practice direction was introduced to deal with electronic discovery.5 It is noteworthy that at the time the Creswell Report was published, the existing CPR provisions on discovery were considerably more detailed and modern than the provisions of Order 31 RSC in this jurisdiction. Rules of the Superior Courts (Discovery) 2009 If the judiciary was slow to embrace the digital age, the Superior Courts Rules Committee has been even slower. When the rules on discovery were amended in 1999, the opportunity was not taken to address this issue and the rules remained silent on the question of electronic discovery. Finally, in 2009, an amendment was introduced which attempts to modernise the procedure.6 Unfortunately, in this author’s opinion, the amendment is quite inadequate: it lacks detail, confuses important procedural concepts and addresses only the inspection of ESI while omitting to address how discovery is to be made. Request for voluntary discovery The 2009 Rules entirely replace Order 31, rule 12 RSC. Sub-rule (6) now deals with the requirement to seek voluntary discovery before issuing a motion. It provides, inter alia, that an order for discovery shall not be made unless –

“(a) the applicant for same shall have previously applied by letter in writing requesting that discovery be made voluntarily – …

(iii) where the discovery sought includes electronically stored information, specifying whether the applicant seeks the

                                                                                                               5 PD 31B. See below. 6 S.I. No. 93 of 2009.

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production of any documents in searchable form and if so, whether for that purpose the applicant seeks the provision of inspection and searching facilities using any information and communications technology system owned or operated by the party requested.”

It is very difficult to see how this mandatory requirement can be effectively applied in practice. The essence of a request for discovery is that the applicant is asking the respondent what relevant documents he holds. True it is that in many cases the applicant will specify particular documents in his request, but in many more cases he will identify only categories of documents which he believes might exist. This provision presupposes that the applicant knows what documents he wants, how those documents are stored and whether they exist in a format which will require access to the respondent’s IT facilities. The problem with this rule is that it blurs the distinction between discovery of documents on the one hand, and production and inspection of documents on the other. The purpose of discovery is to obtain on oath a list of the relevant documents held by the other side. It is only on receipt of that list that the applicant can decide which documents, if any, he wishes to see. Only then can he begin to consider the format in which documents might need to be produced. A request for voluntary discovery which fails to address this issue is defective and, in theory, a court could refuse to order discovery on that basis. There will of course be cases in which the applicant knows precisely what he requires and how the documents are stored. In all other cases, it appears that the best an applicant can do is include in his letter a generic request along the following lines:

“Insofar as any of the documentation sought in this letter constitutes or includes electronically stored information, we require the production of such documentation in searchable form and, if necessary in order to read and/or search the documentation, we will require the provision of inspection and searching facilities using the information and communications technology system(s) owned or operated by your client.”

Clearly this is a largely meaningless formula; it appears to be necessary for strict compliance with the rules. Order for discovery Order 31, rule 12(2) now attempts to address the manner in which discovery may be ordered where it includes ESI. It provides that, on hearing an application for discovery, if the court is satisfied that ESI covered by the order “is held in searchable form and can be provided … without significant cost” to the respondent, the court may –

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“(i) further order that the documents or classes of documents specified in such order be provided electronically in the searchable form in which they are held by the party ordered to make discovery, or

(ii) where the court is satisfied that such documents or classes of documents, or any information within such documents, could not, if provided electronically, be subjected to a search by the party seeking discovery without incurring unreasonable expense, further order that the party ordered to make discovery make available inspection and searching facilities using its own information and communications technology system, so as to allow the party seeking discovery to avail of any search functionality available to the party ordered to make discovery.”

Again, this provision confuses discovery with production and inspection. It contemplates that the court, on an application for discovery, will direct the respondent to furnish documents in a “searchable form” to the applicant. Yet this is before the court or the applicant has seen the affidavit of discovery and knows what documents exist and how they are stored. Normally at this stage the parties should be arguing over whether certain categories of documents are relevant and necessary. Now it seems that the respondent is also required to identify all of the ESI which might fall into those categories and the court must engage in a consideration of how they are to be made available for inspection. Inevitably this means that applications for discovery will be longer and more expensive, even though it may ultimately transpire that the respondent has no relevant documents which the applicant wishes to see. Perhaps a more sensible approach would be to require a party making to discovery to specify in his affidavit which documents are stored electronically and in what format they exist. That would facilitate a meaningful debate as to the means by which they might be produced or inspected and the necessity for technical assistance or access to the respondent’s IT system. Independent expert Setting aside the objections to the rule ventilated above and assuming that these issues are being considered on an application for inspection of previously discovered documents, sub-rule (3) provides that the court may appoint an independent expert to search the documents:

“(a) Any order made under sub-rule (2)(c) may include such provision or restriction and be subject to such undertakings from any party or person as the Court may consider necessary to ensure that documents discovery of which has not been ordered are not accessed or accessible, and otherwise to secure the information and communications technology system concerned.

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(b) Such order may in particular include a provision that the inspection and searching of documents shall be undertaken by an independent expert or person agreed between the parties, or appointed by the Court in default of agreement (instead of being undertaken by the party seeking discovery), who may conduct such inspections and searches as may be required and report the results to the party seeking discovery.

(c) Where such order makes provision for inspection and searching of documents in the manner referred to in paragraph (b), the party seeking the order shall indemnify such independent expert or person in respect of all fees and expenses reasonably incurred by him, and the fees and expenses so indemnified shall form part of the costs of that party for the purposes of Order 99.”

A significant aspect of these provisions is that the independent expert is required to report the result of his inspections and searches only to the party seeking discovery. It is difficult to see why this should be so. In the first place, basic principles of fairness would seem to dictate that both parties should be made aware of the independent expert’s findings. Secondly, there is a risk that the expert might uncover ESI during his search which the owner of the information did not intend to include or the existence of which he was unaware. Accordingly, it would seem to make sense that the person making discovery should also receive the expert’s report, so that he knows exactly what information has been disclosed and can raise any reasonable objection. The rules are silent on the type of expert envisaged and manner in which the expert is to carry out searches. As such, they raise more questions than they answer. Is the expert a lawyer? Is it somebody qualified in the area to which the case relates, such an engineer or an economist? Or is it an expert in computers? The last of these might seem the most obvious, but how will he know if a document is relevant to the order for discovery? What is the expert supposed to do? Is he to read every document on the computer system? Is it his function to unlock encrypted files? Can he reconstitute previously deleted files? Can he generate from computer data documents capable of being understood by a human? These questions point up the reality that it is not really feasible for a court, in complex litigation, to get involved in the minutiae of how ESI is to be searched and presented. In practice, insofar as these issues have arisen to date, it appears that both parties tend to appoint their own experts to represent their interests. A growing number of individuals are marketing themselves as experts in electronic discovery and there are a number of specialist computer packages available which are designed to coordinate and search documents for litigation purposes. Ideally, what is required is a model approach to these issues which can be adopted by the parties or imposed by

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the court. Such models exist – e.g. the Electronic Discovery Reference Model7 – but none is tailored specifically to Irish law. In the Madoff litigation, which is currently making its way through the High Court, the parties have ultimately sought to reach agreement on the methodology for searching through the millions of potentially relevant documents rather than have the court try to impose terms. This involves a “discovery forum”, in which solicitors and IT experts for each of the parties meet to negotiate issues such as whether ESI can be searched by reference to certain key-words and, if so, what those key-words should be. This seems to be an eminently sensible approach to the difficulties presented by ESI. The English Civil Procedure Rules In July 2010, a practice direction was introduced in England on ‘Disclosure of Electronic Documents’.8 The practice direction provides detailed definitions of relevant terms such as ‘electronic document’ and ‘metadata’. It sets out general principles to be borne in mind by parties and their lawyers when considering disclosure of ESI, including the need to manage electronic documents efficiently to minimise costs and the need in giving disclosure to give effect to the overriding objectives of the procedure. This paper does not review the English practice direction exhaustively, but focuses on some aspects which may provide useful guidance to Irish practitioners in the absence of detailed rules in this jurisdiction. Preservation of documents As the Creswell Report recognised, companies have a variety of approaches to the preservation and destruction of documents. This is of particular significance in the context of electronic documents, which are so much greater in volume and whose destruction or retention may be technically complex. The courts have previously considered the effect of the destruction of documents on the conduct and outcome of litigation. In Infabrics Ltd v. Jaytex Ltd,9 a copyright case, the court was prepared to draw adverse inferences from the destruction by the defendants of certain documents which would have proved the extent of sales of the defendant’s products. Similar issues arose in Douglas v. Hello! Ltd,10 where the court drew a distinction between electronic documents destroyed before proceedings commenced and those destroyed while proceedings were in existence. In Rockwell Machine Tool Co Ltd v. E.P. Barrus (Concessionaires) Ltd,11 Megarry J. held that solicitors were required “to take positive steps to ensure that their clients appreciate at an early stage of the litigation, promptly after                                                                                                                7 www.edrm.net 8 PD 31B. The practice direction applies to claims issued on or after the 1st October 2010. 9 [1985] F.S.R. 75. 10 [2003] 1 All E.R. 1087. 11 [1968] 1 W.L.R. 693.

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the writ issued, not only the duty of discovery and its width but also the importance of not destroying documents which might possibly have to be disclosed”. The practice direction addresses this as follows:

“As soon as litigation is contemplated, the parties’ legal representatives must notify their clients of the need to preserve disclosable documents. The documents to be preserved include electronic documents which would otherwise be deleted in accordance with a document retention policy or otherwise deleted in the ordinary course of business.”

It is unclear what sanction might be imposed if documents are destroyed and it seems likely that disputes might arise as to when it can be said that litigation is “contemplated”. Reasonable search Rule 31.7 of the CPR requires a party making disclosure to carry out a “reasonable search” for relevant documents. The practice direction sets out how that requirement is to be applied in the case of ESI. For example, it provides that in some cases it may be reasonable to search only part of a party’s electronic storage system, whereas in other cases the entire system may have to be searched. Significantly, clause 24 of the practice direction provides:

“The primary source of disclosure of Electronic Documents is normally reasonably accessible data. A party requesting … specific disclosure of Electronic Documents which are not reasonably accessible must demonstrate that the relevance and materiality justify the cost and burden of retrieving and producing it.”

Key-word searches One method of searching for relevant material in a large volume of ESI is by way of a key-word search. This involves identifying specific terms to search for in ESI, such as the names of the parties or the numbers of specified accounts. Anecdotal evidence suggests that there are cases in Ireland in which the parties themselves have agreed to key-word searches, but there is no provision for them in the RSC: they are probably not strictly in compliance with the Irish discovery regime, which usually requires a party to discover all documents falling within a particular category. However, there seems to be no reason why a court might not frame an order for discovery so that a party is required to discover only those documents falling within a particular category which have been revealed by a specified key-word search.

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The English practice direction envisages the use of key-word searches “if a full review of each and every document would be unreasonable”. But it also contains a warning:

“However, it will often be insufficient to use simple Keyword Searches or other automated methods of searching alone. The injudicious use of Keyword Searches and other automated search techniques – (1) may result in failure to find important documents which ought

to be disclosed, and/or (2) may find excessive quantities of irrelevant documents, which if

disclosed would place an excessive burden in time and cost on the party to whom disclosure is given.”

In light of these risks, the practice direction advocates supplementing key-word searches with “additional techniques such as individually reviewing certain documents or categories of documents (for example important documents generated by key personnel) …”. Some conclusions Unfortunately, it appears that the RSC remain some considerable distance behind developments in technology which most of us now take for granted in our daily lives. As an attempt to address that lacuna, the 2009 amendment fell far short of what was required and a valuable opportunity was missed to bring a degree of certainty to a complex and difficult area. As noted above, there appear to be real difficulties with the practical application of the new rules. It remains to be seen how the courts will deal with those difficulties. Even if the rules can be interpreted in a sensible way, there are significant issues which have not been addressed at all. For the time being, it has been left to the parties and the judiciary to address those issues on a case by case basis. In the absence of detailed rules in this jurisdiction, it may be that the practice direction adopted by the English courts can provide guidance to parties and practitioners. In particular, the use of an electronic discovery questionnaire and the adoption of the approach taken to reasonable searches and key-word searches might prove valuable. Provisions along those lines could easily be incorporated into an agreement to make discovery or be made part of an order. Battles over discovery of ESI have the potential to increase exponentially the costs of civil litigation. As the English provisions make clear, the complexity of electronic discovery means that it is not ideally suited to determination by adversarial courtroom argument. Where possible, a collaborative approach involving legal and IT experts from both sides is likely to be more efficient and effective.

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CONTINUING PROFESSIONAL DEVELOPMENT

Electronic Discovery: Practical difficulties and recent case law

Paper by Andrew Fitzpatrick Monday 31st January 2011____________________________________________________________

Introduction

In swearing an affidavit of discovery,1 a deponent is required by Order 31 Rule 13 RSCand Form 10 of Appendix C2 to aver:

“According to the best of my knowledge, information, and belief, I have not now,and never had in my possession, power or procurement or in the possession,custody or power of my solicitors or agents, solicitor or agent, or in thepossession, custody or power of any other persons, or person on my behalf, anydocument of any kind or any electronically stored information, or any copy of orextract from any such document or information, relating to the matters inquestion in this suit, or any of them, or wherein any entry has been maderelative to such matters, or any of them, and falling within the relevantcategories of documents specified in the letter requesting voluntary discovery .../ in the order of the Master of this Honourable Court other than and except thedocuments ... set forth in the said first and second schedules hereto.”

The inclusion of this negative form of averment in the penultimate paragraph of theaffidavit of discovery in effect requires that the deponent swear on oath that he hascarried out a “reasonable” and “diligent” search3 of all documents and electronicallystored information within the possession, power or procurement4 of the party on whosebehalf discovery is being made and that these searches have revealed no otherdocuments or electronically stored information other than those identified in theaffidavit. In any case, this is a particularly stark averment for anyone to make and

1More correctly, but less frequently, referred as to an “affidavit as to documents.” See Order 31, Rule 13 RSC andAppendix C, Form 10.2 As amended by statutory instrument 93/ 2009 – Rules of the Superior Courts (Discovery) 2009.3 Per Budd J. in Altantic Shellfish Limited v Cork County Council and others (Unreported, High Court, Budd J., 15th

August, 2006.) [2006] IEHC 215, at pp. 5 to 6.4 For judicial analysis of meaning of “possession, “power” and “procurement” in the context of discovery ofdocuments, see Johnson v Church of Scientology [2001] 1 I.R. 682, Bula v Tara Mines Limited [1994] 1 I.L.R.M. 11,Curtin v Dail Eireann [2006] 2 I.R. 56 and Northern Bank Finance Corporation v Charlton (Unreported, High Court,Finlay P. 26th May, 1977).

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significant duties5 fall upon solicitors to ensure that an affidavit of discovery does notomit relevant documents. In the particular context of the discovery of electronicallystored information, this may a difficult duty to discharge. Whereas one may previouslyhave been quite confident that an affidavit of discovery was complete following aphysical search of a company’s hard copy files, it is important that every deponent bemade aware that he or she cannot properly swear an affidavit of discovery containingthe negative averment cited above without a full search of the entirety of thediscovering party’s electronically stored information being carried out. This paper willexamine the practical difficulties that arise where a party purports to make discovery ofelectronically stored information, with particular reference to recent case law, and willfocus on the following issues:

(1.) The need to make discovery of all “documents” and electronically storedinformation.

(2.) The extent of the search which the discovering party is required to carryout of its electronic information storage systems and the use of key wordsin those searches.

(3.) The extent to which the party seeking discovery may be permitted toinspect the discovering party’s electronic information storage systems.

(4.) Whether the discovering party can be required to generate or bring intoexistence for the first time a document which did not previously “exist” inorder to properly discharge its obligations to make full discovery.

Discovery of all “documents” and electronically stored information

Prior to its amendment by statutory instrument 93 of 2009 Rules of the Superior Courts(Discovery) 2009, Order 31, Rule 12 required parties to make out an affidavit ofdiscovery in relation to all “documents” falling within their power or possession. Througha number of judicial decisions, the definition of the phrase “document” has evolved to apoint whereby its ambit has become extremely wide. The early definitions of the phrasefocussed on the form of the item which was said to be a document. In R v Daye,6

Darling J. held:

“...any written thing capable of being evidence is properly described as adocument and it is immaterial on what the writing may be inscribed.” 7

5 See Irish Nationwide Building Society v Charlton (Unreported, Supreme Court, Murphy J., 5th March, 1997) andWoods v Martins Bank Limited [1959] 1 Q.B. 55.6 [1908] 2 K.B. 330.7 Ibid., at p. 340.

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However later decisions moved to examine the function of the item in question indetermining whether it might be considered to be a document. In Hill v R,8 HumphreysJ. held:

“I find that a document must be something which teaches you and from whichyou can learn something, i.e., it must be something which affords information. Inthe dictionaries the word is repeatedly defined as something which is ‘evidence,’not in the sense that it is something admissible in a court of law, but as beingsomething which makes evident that which otherwise would not be evident. Toconstitute a document, the form which it takes seems to me to be immaterial; itmay be anything on which the information is written or inscribed - paper,parchment, stone or metal.”9

While this latter definition was no doubt wider, the use of the words “written orinscribed” could be taken to in some way limit the scope of “document” to include onlythose items on which information was physically written or inscribed. The position wasclarified in Grant v Southwestern and County Properties Limited,10 where Walton J.ordered the discovery of a tape recording:

“It appears to me that written or printed words are, after all, only encapsulatedsound - and in a sense badly encapsulated sound, in that they often do not, whenthey purport to be a record of direct speech, embody the tone of voice, theinflexions, the subtleties of phrasing and pauses, which form the warp and woof ofreal life conversation. If two parties to litigation have a record of a vitalconversation, one in the form of a shorthand note, and the other in the form of atape recording, I think that both would be justified, under normal English usage, insaying that they held "documentary proof" of the conversation. If there was inexistence a tape recording of Queen Elizabeth I's speech to her troops at Tilburywould not all the world say that that was a priceless historical document?

It is, I think, noteworthy that instructional films have for many years now beencalled ‘documentary films.’ This strengthens my belief that in ordinary currentEnglish usage a document is primarily something that instructs and is by no meansto be confined to ‘bokes, clad in blak or reed, of Aristotle and his philosophye’which the Clerk of Oxenford had in days gone by, or things ejusdem generistherewith. A film is a documentary film, notwithstanding that the sound is, ofcourse, incorporated in the print. I do not think that popular speech makes anydistinction between the visual and oral parts of what is all one subject matter.”11

From the inclusion of sound recordings in the definition of “document”, the courtsmoved to bring electronically stored information within its ambit. In Victor ChandlerInternational Limited v Customs and Excise Commissioners,12 the court ordereddiscovery of a teletext page, as displayed on a television screen, and in the seminal caseof Derby & Co. Limited v Weldon (No. 9),13 Vinelott J. cited with approval the decision in

8 [1945] 1 K.B. 329.9 Ibid., at pp. 332 to 333.10 [1975] Ch. 185.11 Ibid., at p. 197.12 [2000] 2 All E.R. 315.13 [1991] 2 All E.R. 901.

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Grant v Southwestern and County Properties Limited and held that digital informationstored on a database was discoverable:

“I respectfully adopt that statement of principle. It must, I think, apply a fortiorito the tape or disc on which material fed into a simple word processor is stored.In most businesses, that takes the place of the carbon copy of outgoing letterswhich used to be retained in files. Similarly, there can be no distinction inprinciple between the tape used to record a telephone conversation in Grant vSouthwestern and County Properties Ltd ... which was an ordinary analogue tapeon which the shape of sound waves is, as it were, mimicked by the pattern ofchemical deposit on the tape, and a compact disc or digital tape on which sound,speech as well as music, is mapped by co-ordinates and recorded in the form ofgroups of binary numbers. And no clear dividing line can be drawn betweendigital tape-recorded messages and the database of a computer on whichinformation which has been fed into the computer is analysed and recorded in avariety of media in binary language.”14

Thus, while statutory instrument 93 of 2009 amended Order 31 Rule 12 RSC to refer notjust to documents but also to “electronically stored information”, it may be that thisparticular amendment was not necessary as it had been clear for some time that suchinformation was already discoverable as a “document.”

However, while it is clear that electronically stored information is discoverable, the wideambit of what may constitute electronically stored information had perhaps escapedmany. The 2004 report of a working party in England chaired by Mr. Justice Cresswell15

identified the following separate categories of electronically stored information whichwould be discoverable:

“(1) Active or online data: data which is directly accessible on the desktop

computer. On-line storage is used in the very active steps of anelectronic record’s life, when it is being created or received andprocessed, as well as when the access frequency is high and the requiredspeed of access of fast. Examples of such data include material held onhard drives, filed documents and inbox and sent items in an e-mailsystem.

(2) Embedded data: this is data which is not normally visible when adocument is printed, although can be viewed on the screen. Wordprograms usually store information about when data files are created,when edited, by whom, and who has accessed them. Other examplesare formulae for spreadsheets and calculations which are programmedinto a system, but are not visible on printed out documents.

14 Ibid., at p. 906.15 “Electronic Disclosure – A report of a working party chaired by the Honourable Mr. Justice Cresswell dated 6October 2004.”

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(3) Replicant data (otherwise known as ‘temporary files’ or ‘file clones’): thisis automatically created by the desktop computer. Many programs havean automatic back up feature which creates and periodically saves copiesof a file as the user works on it. These are intended to assist recovery ofdata caused by computer malfunction, power failure or when thecomputer is turned-off without the user saving the data. Examples ofsuch data include automatic saves of draft documents, temporary copiesof opened e-mail attachments and recovered files automatically availablefollowing a computer malfunction.

(4) Back-up data: this is data held in a storage system. On the most basiclevel it can consist of offline storage in the form of a removable opticaldisk or magnetic tape media, which can be labelled and stored in a shelf(in contrast with near line data which is directly accessible from thecomputer and is readily accessible). Most organisations use back-up datato preserve information in case of a disaster. This can take various formsranging from copying information stored on the system to a back-upsystem in the form of magnetic tapes or by sending files over the internetto a third party’s computer (some companies even offer computer usersfree storage space on their web sites). The disadvantage with back-upsystems is that usually the data is compressed and can be difficult andcostly to retrieve.

(5) Residual data: this is material deleted from the user’s active data andstored elsewhere on the database. Deleting a file or e-mail removes itfrom the user’s active data, instead the data is stored elsewhere on thedatabase and can become fragmented. The data can usually be retrievedwith sufficient expertise and time.”

Thus, it can be seen that when one purports to make discovery of electronically storedinformation, one is not simply limited to referring to that information which can beconveniently printed out, such as for example MS Word versions of documents or e-mails sent between the parties. Instead, one must also refer to all previous drafts ofthose documents or e-mails and also, all metadata regarding the creation andcharacteristics of the documents itself16. The particular problems that can arise in thecontext of the discovery of e-mails were highlighted in Byers v Illinois State Police17:

“Computer files, including e-mails, are discoverable...However, the Court is notpersuaded by the plaintiffs' attempt to equate traditional paper-based discoverywith the discovery of e-mail files ... Chief among these differences is the sheervolume of electronic information. E-mails have replaced other forms ofcommunication besides just paper-based communication. Many informalmessages that were previously relayed by telephone or at the water cooler arenow sent by e-mail. Additionally, computers have the ability to capture several

16 For detailed discussion of the practical problems caused in making discovery of various forms ofelectronically stored information, see “Electronic Evidence”, Second Edition, 2010, Mason et al., Chapter2.17 53 Fed. R Serve. 3d 740(N.D.III. May 31, 2002)

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copies (or drafts) of the same e-mail, thus multiplying the volume of documents.All of these e-mails must be scanned for both relevance and privilege. Also,unlike most paper-based discovery, archived e-mails typically lack a coherentfiling system. Moreover, data archival systems commonly store information onmagnetic tapes which have become obsolete. Thus, parties incur additional costsin translating the data from the tapes into useable form.”

Consequently, if no limit is agreed or imposed on the ambit of the discovery that aparticular party is required to make, the burden of disclosure with regard toelectronically stored information can be a heavy one. In Digicel (St Lucia) Ltd v Cableand Wireless plc,18 the court ordered that back up data storage tapes were discoverableand in Noble Resorces S.A. v Gross,19 the court ordered discovery of SMS messages,including drafts and fragments, together with the memory and back up version of acompany director’s Blackberry. It is important therefore that parties are aware from avery early stage in proceedings of the ambit of the searches that they will be required tocarry out and of the desirability of agreeing with the other party some boundary on theextent of the searches that both parties will carry out when making discovery ofelectronically stored information.

Reasonableness of searches and the use of key words

The harshness of the burden that can fall upon a party making unrestricted discovery ofelectronically stored information can be illustrated from the following statement ofKearns J. in Dome Telecom Limited v Eircom Limited,20 where the question of whetherone party was required to discover detailed metadata regarding telephone call andbilling records was considered:

“The competition judge had evidence that call data records ("C.D.R.") existedwithin the defendant's computer system, but that the same could not now beretrieved without exhuming vast numbers of C.D.R. from the system. While thedefendant did operate a billing system for operators and customers by referenceto the C.D.R., these bills were generated electronically on a temporary basis onlywhen the charges arose and no longer exist. There was evidence that theretrieval of such information from the system would impose an enormous burdenon the defendant. For each month between August, 1999 to April, 2005 therewould be approximately 450 million records which would occupy about 100 GB ofdisk space. Only one month at a time could be recreated. In order to restore theentire 66 months in question, this would require an estimated minimum of 132days, following which data analysis would have to be run on the extractedrecords in order to identify the freephone traffic and separate it from non-freephone traffic, as only the former would be discoverable and the defendantwould in addition possibly breach its obligations of confidentiality to its clients if itwere to provide all the estimated C.D.R. in question.”21

18 [2008] EWHC 2522 (Ch)19 [2009] EWHC 1435 (Comm.)20 [2008] 2 I.R. 726.21 Ibid., at p. 763.

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In England and Wales, the requirement to search for and discover relevant documents isprovided for under the Civil Procedure Rules, rule 31.7(1) of which requires that theparty making “standard disclosure” make a “reasonable search” for documents. Rule31.7(2) sets out the factors that are relevant in deciding on the reasonableness of aparticular search:

(a.) the number of documents involved;(b.) the nature and complexity of the proceedings;(c.) the ease and expense of retrieval of any particular document; and(d.) the significance of any document which is likely to be located during the

search.

Unfortunately, in Ireland the rules are less prescriptive and the extent of the obligationon the discovering party to carry out searches for relevant documents is not made clear.In Altantic Shellfish Limited v Cork County Council and others,22 Budd J. held that a“reasonable” and “diligent” search23 must be carried out and had regard to criteriasimilar to those set out in Rule 31.7(2) of the English C.P.R. In Framus Limited v CRHplc,24 Murray J. highlighted the need for proportionality between the volume of thedocuments to be discovered and their potential impact on the case:

“I think it follows that there must be some proportionality between the extent orvolume of the documents to be discovered and the degree to which thedocuments are likely to advance the case of the applicant or damage the case ofhis or her opponent in addition to ensuring that no party is taken by surprise bythe production of documents at a trial.”25

In Dome Telecom Limited v Eircom Limited,26 the court was required to considerwhether the defendant should be required to make discovery of detailed metadataregarding telephone calls and billing records in light of certain factual concessions thatthe defendant had already given. Rejecting the application and in determining that theconcessions already made were sufficient to enable the court of trial to adjudicate onthe issue of liability, Kearns J. held:

“It would be quite wrong in my view not to acknowledge the cost and time/effortinvolved in the gargantuan task which an order under category 9 would imposeon the defendant, notably when that task is weighed against the limited fruitswhich might emerge from compliance, confined as those fruits would be toquantum of loss only and then only to a period when the defendant was ‘closingoff’ the problem. In this context one must also bear in mind that on the evidencethe plaintiff itself placed before the High Court, only a small proportion of itscustomers used the 1800 freephone number from mobile and payphone in orderto access stored telephone credit, that the vast preponderance of user was onfixed line calling where no charges were imposed. Thus while the material sought

22(Unreported, High Court, Budd J., 15th August, 2006.) [2006] IEHC 215.

23 Ibid., at pp. 5 to 6.24 [2004] 2 I.R. 20.25 Ibid., at p. 38.26 [2008] 2 I.R. 726.

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under category 9 is undoubtedly relevant, can it be described as "necessary", orcan it be so described at this stage in the proceedings?

It can not always be the case that relevance creates necessity, becauseotherwise there would be no need to have the two separate concepts ofrelevance on the one hand and necessity on the other. Necessity is the truethreshold where issues of proportionality must be assessed and clearly the morenecessary the document is the more proportionate it will be for the requestingparty to obtain discovery. It seems to me that the facts and circumstances of theparticular case must then also be considered. Is it a case which convenientlylends itself to be decided in modules in the interests of efficiency and costsaving? Examples of litigation which lend themselves to such division mighttypically include, for example, medical negligence cases where liability is hotlycontested. The resolution first of the liability issue may well dispose of the entireproceedings. In such circumstances - which also arise here - can cumbersomediscovery which now relates only to a certain aspect of quantum be regarded asnecessary and proportionate at this point?”27

In England, a series of decisions dealing with the specific context of discovery ofelectronically stored information have held that the wording of Rule 31.7(2) of theEnglish C.P.R. does not require that an exhaustive all encompassing search be carriedout. In Nichia Corporation v Argos Limited,28 Jacob L.J. held that the requirement toapply a proportionate approach meant that the courts had to accept the small risk thatperfect justice would not be achieved:

“There is more to be said about the change to standard disclosure and indeed tothe express introduction of proportionality into the rules of procedure. ‘Perfectjustice’ in one sense involves a tribunal examining every conceivable aspect of adispute. All relevant witness and all relevant documents need to be considered.And each party must be given a full opportunity of considering everything andchallenging anything it wishes. No stone, however small, should remainunturned. Even the adversarial system at its most expensive in this country hasnot gone that far. For instance we do not include the evidence of a potentiallymaterial witness if neither side calls him or her. Nor do we allow pre-trial oraldisclosure from all potential witnesses as is (or at least was) commonly thepractice in the US.

But a system which sought such ‘perfect justice’ in every case would actuallydefeat justice. The cost and time involved would make it impossible to decide allbut the most vastly funded cases. The cost of nearly every case would be greaterthan what it is about. Life is too short to investigate everything in that way. So acompromise is made: one makes do with a lesser procedure even though it mayresult in the justice being rougher. Putting it another way, better justice isachieved by risking a little bit of injustice.”29

27 Ibid., at p. 772.28 [2007] EWCA 741.29 Ibid., at paras. 50 to 51.

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Similarly in Fiddes v Channel 4 TV Corporation,30 Pill L.J. endorsed the followingstatement:

“I accept that in an ideal world, the claimant should have disclosure of the e-mails sought but it is not an ideal world. In this case, it is a matter of speculationwhether the search that he requests I order would produce anything relevant,and if it did, whether it would help the Claimant's case or undermine it. Therewill undoubtedly be cases where retrieving and searching back up tapes will be aproportionate exercise in a libel action. But in this case, it seems to me, that theissues in the action will be most likely to be resolved on the contemporaneousdocuments that have been disclosed and the oral evidence of the Claimant andthird Defendant, if the case gets that far. In my judgment, the claimant cannot inthe present case show that there is a sufficient likelihood of retrieving any emailthat is both relevant and significant ...”31

These cases are useful in that they contain general statements of principle which mayprovide guidance in informing practitioners’ decisions as to what searches should becarried out in order to make proper discovery. However, they do not offer much by wayof specific assistance in identifying the particular steps that will be required to be takenin order to ensure in advance that a search is reasonable. In the absence of suchguidance, it is suggested that practitioners should attempt to agree in advance not onlythe wording of the categories of documents of which discovery will be made but also theambit of the searches that will be carried out to locate those documents. Thus, whenresponding to a request for discovery in a case where electronically stored informationwill be discovered, the discovering party should not only identify the categories of whichhe proposes to make discovery, he should also precisely identify the data sources whichhe proposes to search.

In many cases where discovery is made of electronically stored information, the partymaking discovery makes use of certain key words to limit the ambit of its search. Thispractice does carry certain risks as identified by Matthews and Malek:32

“In cases where there is a large amount of electronic documents, parties willoften make use of key word searches for the purposes of identifying relevantdocuments to be reviewed. Simply handing over to the other side or providingaccess to the computer hard drive is usually not a viable option, particularly asthe hard drive will often contain a mass of irrelevant material, some of whichmay be confidential or privileged. Moreover, the use of key word searches alonewill rarely be sufficient to ensure that disclosure is given of all documents whichfall within standard disclosure; it will usually be necessary for the email accountsof the persons most closely involved to be searched visually by a member of thelegal team.”33

30 [2010] EWCA Civ. 516.31 Ibid., at para. 19.32 “Disclosure”, Mathews and Malek, Third Edition, 2007.33 “Disclosure”, Mathews and Malek, Third Edition, 2007, at para. 7.11.

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The completeness of the discovery provided by the use of key word searches willdepend on the particular key words employed. In Digicel (St Lucia) Ltd v Cable andWireless plc,34 the court was asked to determine whether a discovering party hadsufficiently discharged his obligation to carry out a reasonable search by employing 16particular key words in its search of electronically stored information or whether a freshsearch should be carried out using a further 34 key words. Morgan J. held that theburden of demonstrating that a further search was required fell upon the party seekingfurther discovery:

“If one were to adopt the ‘leave no stone unturned’ approach to disclosure thenone would be more ready to add key words to those originally used by theDefendants. However, it will usually be wrong in principle to adopt that approachand, in my judgment, it would be wrong to adopt that approach in thecircumstances of this case. One therefore has to consider the proportionality ofadding an additional key word. For that purpose one has to form some sort ofview as to the possible benefit to the Claimants of adding the key word and thepossible burden to the Defendants of doing so. The burden to the Defendantswill principally consist of the burden of manually reviewing a large number ofirrelevant documents.”35

The judge then set out the methodical approach that he intended to take in reviewingthe extent of the search carried out:

“At the first stage, I will attempt to identify where to draw the line betweeninclusion and exclusion of the suggested additional key words. If as a result ofthat process I conclude that the Defendants should have, first time round, usedadditional key words I will then have to consider whether to make an order for afurther search under Rule 31.12. It is also possible for me to distinguish betweenthe e-mail accounts of the 16 individuals who have already been the subject ofkey word searches and any further e-mail accounts found following therestoration of back-up tapes, where there have not previously been any keyword searches.

...

I will now deal with the individual key words put forward by the Claimants. Thedebate in relation to individual key words varies from word to word. Further, theparties made thorough and detailed submissions as to the possible benefit andthe possible disadvantage of including an additional key word together withdetailed references to the witness statements served for the purposes of thisApplication and to the lengthy pleadings. I do not intend in this judgment torehearse the detail of those arguments. I will apply the approach which I haveattempted to identify earlier in this judgment and will weigh the rival argumentsand express my conclusions which involve an assessment of the proportionalityof including an additional key word. On a subject such as proportionality, there isno precise and correct answer. Arguments as to proportionality involve choosing

34 [2008] EWHC 2522 (Ch)35 Ibid., at para. 81.

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a cut-off point in a range of possibilities and there is no single right answer as towhere the cut-off point should be.”36

In resolving the debate between the parties as to the adequacy of particular key words,Morgan J. did not set out any precise criteria against which he intended to measure thewords in question. Instead, he identified the nature of the factual matters at issue in theaction and the likelihood of whether the use of additional key words would result in theproduction of documents relevant to those facts. Those key words which would revealdocuments “which have got nothing to do with the issues in the action”37 were rejectedand those that had “a real chance” of revealing further relevant documents38 wereincluded.

There are few English cases in which the adequacy or otherwise of particular key wordsare considered and instead, it appears to be the approach to encourage parties to reachagreement on the particular words to be used and where that cannot be achieved, fortrial searches using a variety of different key words to be employed to determine whichis more appropriate.39

In Ireland, no decision has been made on whether the use of key words in carryingsearches to prepare an affidavit of discovery is permitted and in Hansfield Developmentsv Irish Asphalt Limited,40 where the plaintiffs had made use of a series of impugned keywords to make discovery, Gilligan J held that the particular circumstances of the casemeant that it was not necessary to decide whether any party could employ the use ofkey words to prepare an affidavit of discovery. It is anticipated however that the Irishcourts will be reluctant to involve themselves in determining whether a discovering partyhas complied with his obligations by employing a particular series of key words and will,as in England, encourage parties to reach agreement on which terms should be used. InHansfield Developments v Irish Asphalt Limited, Gilligan J. emphasised the need for theparties to discuss and agree upon the use or omission of particular key words:

“The plaintiffs opted for electronic search terms and the initial searches wereclearly deficient. The Court does not consider in the particular circumstances thatarise on this motion that it is necessary to consider or decide the issue as towhether or not the use of search terms is permissible under Irish Law for thepurposes of making discovery. The plaintiffs have apologised to the Court andthe defendants for the deficiencies in their initial discovery, and in June 2009indicated to the Court 37 search words which they were proposing to use. TheCourt does not consider that criticism of the defendants’ solicitors for notengaging at that point in time with regard to the search terms as outlined to theCourt is unfair, because the onus is on both parties to engage and, if thedefendants considered that the 37 search words were inadequate they did have

36 Ibid., at paras. 81 to 82.37 Ibid., at para. 79.38 Ibid., at para. 86.39 In Goodale and others v Ministry of Justice and others [2009] EWHC B41, the Senior Master of theQueen’s Bench directed that “limited searches” should be carried out to identify how many documentswould be revealed by each of the 31 key words in question.40 Unreported, High Court, Gilligan J., 12th February, 2010. [2010] IEHC 32.

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the opportunity to suggest additional terms and, indeed, they did so in respect ofone term...”

In that case, the court was not required to make a determination on whether theparticular key words were adequate or not and instead directed that the situation berectified through the parties engaging in discussions on what terms should be used:

“The plaintiffs’ legal advisors are very familiar with the various concerns thathave been expressed to the Court in respect of the e-discovery as carried out bythem. The Court has already indicated that it has a concern as to thecompleteness of the e-discovery as achieved, notwithstanding that the Courtaccepts that the plaintiffs have made strenuous efforts with the assistance ofexpert professionals to try to rectify the situation that has arisen. In thecircumstances, the Court directs that the plaintiffs’ legal advisors set out aprogramme which they propose to undertake to meet the various concernsexpressed, which programme is to be endorsed by Price Waterhouse Coopersand is to be furnished within an agreed period of time both to the Court and tothe defendants’ solicitors. The defendants’ solicitors in turn are to have the sameperiod of time to respond constructively and in a reasonable manner, bearing inmind the issues of relevance and proportionality.”

Inspection of computer systems

Where the party seeking discovery is not satisfied with the extent of the discovery madeby the other, it remains open for him to apply for an order granting him the right toinspect the other’s electronic information storage systems. Order 31, Rule 12 (2)(c)(ii)now provides:

“Where the Court is satisfied that such documents or classes of documents, orany information within such documents, could not, if provided electronically, besubjected to a search by the party seeking discovery without incurringunreasonable expense, further order that the party ordered to make discoverymake available inspection and searching facilities using its own information andcommunications technology system, so as to allow the party seeking discovery toavail of any search functionality available to the party ordered to makediscovery.”

Prior to the incorporation of this new provision into Order 31, Rule 12 RSC, there wasvery little case law which identified the circumstances in which one party will bepermitted to inspect the computer systems of another to obtain information necessary topresent his or her case. In Mulcahy v Avoca Capital Holdings Limited,41 Clarke J.highlighted that party the party seeking inspection of the computer systems wasrequired to demonstrate that it was necessary:

“... while in the ordinary way the fact that materials may be confidential does notexclude them from being liable to discovery (the exclusion being only available in

41 Unreported, High Court, Clarke J., 14th April, 2005. [2005] IEHC 136.

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respect of documents which are subject to privilege) that nonetheless begs thequestion as to whether the materials are in fact relevant to the case in the firstplace. Obviously a party, such as the defendant in these proceedings, is entitlednot to have confidential material made available to any party unless there is areasonable basis for believing that that material is relevant to the proceedingsand its discovery is necessary or expedient for the fair resolution of theproceedings. So the starting position has to be that it is necessary for theplaintiff to establish that he must have access to a particular set of materials inorder to further his case or damage the defendant's case. The mere fact thatthere may be more expedient ways of going about it, does not seem to me to beparticularly relevant. The plaintiff cannot have an entitlement to have access todocumentation simply because it may be an easier or a cheaper way of dealingwith matters. He does not have a legal entitlement to look at any more than isnecessary for the purposes of the case.”42

A similar observation was made in Derby v. Weldon (No. 9),43 where the parties hadagreed that inspection of the defendant’s computer systems would be required. VinelottJ. held that in principle an order for inspection could only be made where the court wassatisfied that inspection was necessary “for disposing fairly of the case or cause ormatter or for saving costs.”44 Once is is satisfied that the order should be madehowever, the court would then have to embark on the process of resolving the practicaldifficulties that might arise when considering how the discovering party’s computersystems should be inspected:

“At that point the court will have to consider, if necessary in the light of expertevidence, what information is or can be made available, how far it is necessaryfor there to be inspection or copying of the original document (the database) orwhether the provision of print-outs or hard copy is sufficient, and whatsafeguards should be incorporated to avoid damage to the database and tominimise interference with everyday use if inspection is ordered.”45

In this case the experts had agreed on the methodology whereby inspection would bepermitted, but Vinelott J. identified that where agreement could not be reachedsignificant practical difficulties could arise:

“Some of the difficulties which have arisen in this case and which are likely tooccur with increasing frequency in the future are as follows.

A. Even when the relevant material is on-line and capable of being shownon screen or printed out, some means will have to be found ofscreening out irrelevant or privileged material. The party seekingdiscovery cannot be allowed simply to seat himself at his opponent'scomputer console and be provided with all necessary access keys.

42 Ibid., at pp. 9 to 10.43 [1991] 2 All E.R. 901.44 [1991] 2 All E.R. 901 at 907.45 [1991] 2 All E.R. 901 at 907.

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B. There may be material on the computer which is not accessible bycurrent programs but which can be retrieved by reprogramming. Primafacie the powers of the court would extend to requiring that thecomputer be reprogrammed so as to enable the relevant information tobe retrieved. Otherwise an unscrupulous litigant would be able toescape discovery by maintaining his records in computerised form andaltering current programs when litigation was in prospect so thatinformation previously retrievable could not be retrieved withoutreprogramming. Of course questions may then arise as to who bearsthe cost of any necessary reprogramming and whether it can be donewithout affecting current programs.

C. If, as will often be the case, the computer is in daily use, the questionmay arise—it arose acutely in the instant case—whether access can bearranged, in particular whether any necessary reprogramming can bedone or whether information stored in the archival or history files canbe retrieved without unduly interrupting the necessary everyday use ofthe computer.

D. Safeguards may have to be embodied in order to ensure that tapes ordiscs which may have deteriorated in storage are not damaged by useand that the use of them does not damage the computer's reader. Inthe instant case, the condition of some discs was such that read oncethey would be unreadable or only partially readable a second time andthe use of some old discs in fact caused damage to the computer'sreader.

E. In some cases it may be possible for the database to be copied bytransfer onto a disc or tape or directly onto another computer. If that isdone the material may be capable of being analysed in ways whichwere not originally contemplated. Provision may have to be made forthe results of any such analysis, any print-outs made, to be madeavailable to the other party in good time so that he is not taken bysurprise at the trial. In the instant case agreement was recentlyreached for the provision of further experts' reports dealing withinformation gleaned from parts of the plaintiffs' computer databasewhich was transferred to Coopers' computer.”46

Again, this case highlights the need for parties to attempt to reach agreement on howand by what method inspection of computer records will take place.

Generation of material

As question that frequently arises is the extent to which a party making discovery ofelectronically stored information can be required to produce material which is notcurrently available to it. In England, the courts have ordered that back up data storage

46 [1991] 2 All E.R. 901 at pp. 906 to 907.

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tapes which are not currently readable may be required to be reconstituted if it isnecessary to obtain relevant information. In Digicel (St Lucia) Ltd v Cable and Wirelessplc,47 the plaintiff sought an order requiring that the defendant reconstitute up to 700back up tapes, at a potential cost of up to GBP £325.00 per tape as it was suggestedthat they might contain relevant e-mails from seven employees. Notwithstanding thepotential costs, Morgan J. ordered that a further search be carried out:

“The Defendants accept, as they must, that they cannot rule out the possibilitythat there will be additional material. In that case, they cannot rule out thepossibility that the additional material might be of great significance. In myjudgment, it is very difficult to predict the scale of the additional material whichwill be found on a search of 7 further e-mail accounts. However, I am not able torule out the need for a further search just because some part, perhaps even alarge part, of what will emerge has already been disclosed.”48

In considering whether the restoration of back up tapes will be required however, aheavy burden is placed on applicants. In Fiddes v Channel 4 TV Corporation,49 Pill L.J.refused to order to restoration of back up data storage tapes as “the claimant cannot ...show that there is a sufficient likelihood of retrieving any e-mail that is both relevantand significant...”50

In Dome Telecom Limited v Eircom Limited,51 the defendant contended that it was notrequired to provide further information to the plaintiff as the material was available onlyon a database and to provide what was required by the plaintiff would require thegeneration of documents not already in existence. Geoghegan J. held that this problemwould not prevent discovery being ordered:

“It is common knowledge that a vast amount of stored information in thebusiness world which formerly would have been in a documentary form in thetraditional sense is now computerised. As a matter of fairness and commonsense the courts must adapt themselves to this situation and fashion appropriateanalogous orders of discovery. In order to achieve a reasonable parity withtraditional documentary discovery it may well be necessary to direct a party ‘tocreate documents’ within the meaning of the notice of appeal. It may indeed alsobe necessary to direct a party ‘to create documents’ within the meaning of thenotice of appeal even if such ‘documents’ ‘do not exist at the time the order ismade’. I am deliberately using quotation marks because I do not intend toadjudicate on the quasi-metaphysical argument of counsel for the plaintiff thatthe ‘documents’ do in fact ‘exist.’ ”52

Fennelly J. also decided that the defendant would be required to disclose the materialbut on different grounds:

47 [2008] EWHC 2522 (Ch)48 Ibid, at para. 65.49 [2010] EWCA Civ. 516.50 Ibid., at para. 37.51 [2008] 2 I.R. 726.52 Ibid., at pp. 735 to 736.

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“It is, of course, axiomatic that a court will only order discovery of documents orrecords which exist. If no record has been made of a relevant conversation,meeting or event, a court will not, for the purpose of discovery, require a partyto make one.

That is not what is required by the High Court order in this case. Undoubtedly,the order obliges the defendant to take very elaborate, complex and costly stepsin order to make information available in a form in which it has not previouslyexisted. But the call data records (C.D.R.) exist and are capable of beingretrieved. The order is not equivalent to requiring a party to make a record,where one has never existed.”53

53 Ibid., at p. 742.