The Board denied a motion to compel Applicant Princess Race Wear to produce the “metadata” for five photographs that applicant provided during discovery, because Opposer Chix Gear did not ask for metadata in its discovery requests. Chix Gear, LLC v. Princess Race Wear Corp., 2019 USPQ2d 455321 (TTAB 2019) [precedential] (M. Catherine Faint, Interlocutory Attorney).

Applicant Princess sought to register the mark LIFE IS BETTER AT THE RACETRACK for jewelry, bags, and clothing items. Opposer Chix Gear, after receiving the five photographs (in electronic form) in response to its production requests, asked for supplemental information regarding the photographs. When Princess provided none, Chix Gear filed a motion to compel Princess to furnish the date the photographs were taken and the identity of the person who took the photographs.

In response, Princess maintained that none of Chix Gear’s production requests required Princess to provide this information, and therefore there was nothing to compel.

In its reply, Chix Gear referred to the requested information as “metadata,” and insisted that medatata must be provided in order to fully respond to the original production requests, and particularly its request that applicant provide “[a]ll documents evidencing Applicant’s claim that Applicant has priority over Opposer.” According to Chix Gear, the request for the metadata was inherent in that document request because without the requested information “the documents cannot corroborate any alleged priority claim.”

The Board observed that under FRCP 34(b)(1)(C) a party seeking discovery may specify a form for production and may request metadata. However, Chix Gear’s production requests made no mention of metadata, nor did the parties discuss same. When the parties have not specified the form of production for electronically stored information [ESI], the responding party must produce it in the form in which it is “ordinarily maintained” or in a “reasonably usable form.” See Trademark Rule Rule 2.116(a)(iii). The Board noted that, as to the photographs that Princess produced, “it appears on their face that they are reasonably usable as photographs and Opposer does not argue otherwise.”

The Board found no legal basis for any argument that a request for metadata is “implicit” or inherent in Chix Gear’s discovery request. See, e.g.India Brewing, Inc. v. Miller Brewing Co., 237 F.R.D. 190 (E.D. Wis. 2006) (while party may request production in specific electronic format, where it simply asks for “documents,” production in electronic format is not required).

While Rule 34 is a starting point for resolving discovery disputes involving ESI and metadata, there is nothing inherent in the Rule requiring production of metadata where neither party has specified the form in which discovery will be provided, or where metadata has not been requested. See RICHARD L.MARCUS, 8B FED. PRAC. PROC. CIV. 3D § 2219 (Westlaw 2019).

And so the Board ruled that since Chix Gear did not request the “metadata” in its production requests, Princess need not provide it. See, e.g.D’Onofrio v. SFX Sports Grp., Inc., 247 F.R.D. 43, 48 (D.D.C. 2008) (denying motion to compel metadata where discovery request did not specifically request it).

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Text Copyright John L. Welch 2019.