In the matter of Sony Music Entertainment (Australia) Limited v University of Tasmania [2003] FCA 532 Mr Justice Tamberlin had to choose between two competing search protocols and methodologies in making preliminary discovery orders.
Along the way, he came to the conclusion that containers of electronic materials such as CD ROMs, computer hard drives and backup tapes containing voluminous electronic materials, some relevant and some irrelevant, could be considered individual documents in their own right.
Background
The applicants were record companies or exclusive licensees of sound recordings prosecuting infringement of copyright claims. The respondents were three Australian universities who provided computing facilities to staff and students.
The applicants believed that certain persons using the university computing systems were copying music from CDs, uploading them to websites hosted on the university systems and facilitating their distribution through the internet, all in breach of copyright. In addition, there may be third parties including the university itself committing acts which authorised, aided and abetted the process.
They sought access to a wide range of university electronic documents including music files, image files, compressed files, emails, files responding to a list of keywords and activity logs. The purpose of the exercise was to (a) identify prospective defendants and (b) ascertain whether it had a claim against them.
As a preservation measure, pending the hearing of the preliminary discovery application, the parties had agreed to create a set of of CD ROMs, computer hard drives and backup tapes containing snapshots of the contents of various university servers at specific times during 2003.
At the application, the parties proposed different methodologies for searching through the preserved materials.
The applicants sought discovery of the entire contents of three DLT IV tapes and two Exabyte 160 tapes comprising various snapshots of the the entire Physics server, a copy of the “Lewis Computer” and backup copies of spool files.
They proposed to then search these items to find the information sought by the preliminary discovery application.
The University sought to search the tapes themselves according to their own methodology and then make verified discovery in the usual manner.
The university search methodology appeared extensive. It included a variety of file extension and keyword searches. It included emails attaching music or image files or containing keywords. It also included web log transactions responding to keywords.
It wasn’t enough however for the applicant’s forensic expert who criticised the approach on several grounds including:
- certain digital music file extensions were missing;
- filetypes should be identified by reference to the file header not its extension which can be manually altered;
- text search for words such as “song” and “music” failed to take into account the terminology or slang used
- words such as “music”, “download” and “song” are insufficient to locate all relevant material
- any base 64 encoded information which can be used to identify user activity will be lost
- there were problems in identifying compressed music files
- preparatory processes could interfere with the analysis
In response, the university contended that the applicant’s search methods would lead to the retrieval of large amounts of irrelevant materials.
What is a Document?
As the applicants were asking for the entire backup tapes to be handed over they sought to identify each backup tape as a separate document. The respondents countered that a backup tape could not be considered a document within the language of the court rules.
As a preliminary matter, his honour sided with the applicants finding that a collection of electronic records on media such as CD ROMs, backup tapes or hard drives could be considered to be an individual document in its own right and subject to the discovery rules. This was despite the fact that only part of its contents may ultimately be found to be relevant to issues in the matter.
Discovery Orders
As previously noted, the real issue in the case was which of the two competing search protocols proposed by the applicant and respondent was to be used in making preliminary discovery.
In considering the alternatives, the judge found that “the narrow search tools and methods proposed by the Universities” was likely to result in insufficient discovery.
On the other hand, the applicant’s method whilst recovering relevant materials would recover a great deal of “extraneous and irrelevant material” which could not be “readily segregated”. Furthermore, some of those materials could be subject to privilege claims or confidentiality obligations.
In order to use the applicant’s search protocol but still protect the interests of third parties who may have a legitimate privilege or confidentiality claim, he ordered the following discovery steps:
- the backup tapes be handed over the applicant’s forensic examiner for searching according to the applicant’s proposed protocol;
- retrieved materials were to be handed back to the respondents;
- the respondents would then review the materials and make discovery in the normal manner claiming privilege and confidentiality where appropriate; and
- the applicant’s would inspect the discovered documents.
The questions of costs was stood over.
Posted by David McGrath 
