BACKGROUND

On January 22, 2015, the Court issued an Order, requiring the Chemworld Defendants to respond to Plaintiff’s Request for Production No. 11.

In May 2016, counsel for Plaintiff began preparing for Chemworld depositions scheduled for July 2016. Plaintiff’s counsel, who was not counsel of record at the time Defendants initially produced documents responsive to Request for Production No. 11 following the Court’s January 22, 2015 Order, realized that Defendants' production was limited to the 2014-2015 time frame. Counsel for the parties discussed the issue. On June 1, 2016, the attorneys conferred. It was confirmed that Plaintiff possessed Defendants' entire email production. However, Defendants were not aware of whether earlier emails were available either on Chemworld hard drives, personal laptops, or through Go Daddy, Chemworld’s longtime email provider.

In an email dated June 2, 2016, counsel for Defendants wrote that “Chemworld has no objection to an independent IT professional reviewing the system to conduct a search.” (Pl. Mot., Ex. A, p. 3). Counsel for Defendants further wrote, “You indicated that you [will] speak to your client regarding that proposal and get back to me.” Id. Counsel for Plaintiff responded with technical advice on how to do a search through Go Daddy rather than through Outlook and suggested initial search terms. Counsel for Plaintiff also proposed a list of forty-six search terms.

On June 3, 2016, counsel for Plaintiff confirmed that the next step would be for Defendants to run the proposed searches themselves that same date, through their Go Daddy access. Counsel for Plaintiff reaffirmed that there is no date limit for the past emails.

On June 4, 2016, counsel for Defendants confirmed by letter that he had logged into the Go Daddy access server for the email address “Chemworldintl.com” and searched for ten terms, describing the details of the search. (Pl. Mot., Ex. B). Counsel explained further research he had done and the conclusion that it was likely that archived emails would be on the desktop computers in New Jersey. Counsel proposed that, on Monday, June 6, 2016, “I will either attempt to have a Chemworld representative locate the archived files, or we will need outside assistance. Let me know your preference.” Id.

As a result, Plaintiff hired a computer forensic expert, Mr. Saperstein. On June 16, 2016, counsel for Plaintiff sent an email confirming the parties' arrangements for Saperstein to obtain remote access to the Chemworld computers, located in New Jersey, on June 21, 2016. While Saperstein had remote access to the computers, Saperstein would give counsel for Defendants remote access as well. Someone at Chemworld would be physically present with the computer being accessed in New Jersey. Approximately five or six desktop computers would be reviewed.

*2 On June 20, 2016, by letter, counsel for Defendants informed counsel for Plaintiff that Defendants did not agree to the unilaterally imposed condition that counsel for Defendants not be present in the room with Plaintiff’s expert, Saperstein, at the time he is remotely connected to Defendants' computers. Counsel for Defendants wrote that he had objected to that condition on June 14, 2016. Counsel for Defendants reiterated the objection to Saperstein being permitted access to Defendants' computers without physical oversight of his conduct. In addition, counsel for Defendants wrote that Defendants were no longer willing to allow an outside expert digital access from a machine with which they were unfamiliar. He provided the options of Plaintiff’s expert obtaining access to Chemworld’s desktops from counsel for Defendants' server in Portage, Indiana, from counsel for Defendants' laptop in Chicago, or from Defendants' expert’s computer. He stated that Defendants remained willing to have the search conducted remotely. Counsel indicated that Defendants' expert would be conducting a search in the next 12-24 hours and that Plaintiff’s expert was invited to view the search.

On June 21, 2016, counsel and their experts held a conference call. The experts agreed that the best practice was to have the Chemworld computers imaged locally by someone in New Jersey and have those copies sent to Defendants' expert who would then make a copy for Plaintiff’s expert. The experts would develop a joint search protocol, and the attorneys would develop a list of search terms. The parties agreed that the experts would work together to figure out whether and to what extent pre-2014 emails exist through Go Daddy.

Plaintiff represents that its expert began working toward these objectives, seeking a New Jersey area expert who could perform the imaging and submitting a draft of a search protocol to Defendants' expert for review. Defendants did not respond.

On June 30, 2016, Defendants withdrew from the agreement. Counsel for Defendants explained that Atul and Manoj Modi objected to the cloning of the entire hard drives when the discovery dispute initially involved only looking for emails prior to 2012. Defendants advised, with a copy of the letter to both experts, that Defendants were not willing to have the hard drive copied without an ESI protocol in place, noting that the hard drives contain ESI that is irrelevant to the litigation. Counsel proposed that the attorneys complete an ESI protocol for the Court to sign, and provided a proposed plan, based on the Seventh Circuit’s Proposed Model E-discovery Plan.

ANALYSIS

In the Motion for Order to Show Cause, Plaintiff asks the Court to order the Chemworld Dependants to show cause why they should not be held in contempt of court for failing to comply with the Court’s January 22, 2015 Order requiring them to answer Request for Production No. 11, which sought communications between any of Defendants and Chemworld, Chemworld LLC, Atul Modi, Manoj Modi, Paul Bykowski, Tom Daquila and/or Craig Weadon regarding customers and/or former customers of Apex or Finos. In the Motion for Order to Compel an Electronically-Stored Information Protocol, Defendants ask the Court to enter an order requiring Plaintiff to cooperate in the development of an ESI protocol.

As an initial matter, the Court finds that prior negotiations regarding an ESI protocol discussed with the Court were in relation to Bykowksi’s laptop and, thus, are not relevant to the instant dispute.

A Court may enter a finding of civil contempt if it “finds by clear and convincing evidence that a party has violated the express and unequivocal command of a court order.” Ill. Inv. Tr. No. 92-7163 v. Allied Waste Indus. (In re Res. Tech. Corp.), 624 F.3d 376, 387 (7th Cir. 2010). Although it appears that Defendants did not comply with the Court’s January 22, 2015 Order given that they produced only emails from 2014 and 2015 rather than beginning in at least 2007, the Court finds that, under all the circumstances, Defendants are not required to show cause why they should not be held in contempt given Defendants' willingness to work with Plaintiff in May 2016 to identify additional emails that may not have been produced from an earlier time period. However, the Court also finds that Defendants unfairly withdrew their agreement to a procedure to search for the emails, at Plaintiff’s expense and the delay of the litigation.

*3 The Court finds that an agreed ESI protocol is essential at this stage of the discovery process and should have been completed almost two years ago at the outset of this litigation. The ESI protocol will ensure the protection of Defendants' computers and the access needed to discovery by Plaintiff.

The Court overrules Defendants' objection that imaging the computers will result in the production of irrelevant, privileged, and sensitive data; imaging the computer means making a copy of it so that the ESI is preserved. The subsequent search protocol to discover the emails responsive to Request for Production No. 11, to be jointly developed by both experts, is what will address concerns of relevance and privilege. The scope of the forensic examination of the imaged hard drive will include identifying relevant documents as well as determining what relevant documents were deleted, if any, and when. Counsel for Defendants will have an opportunity to review responsive documents from any such search before producing them to Plaintiff’s counsel; thus, counsel for Defendants will have an opportunity to raise any further objections at that time.

Imaging the computers addresses Defendants' concern that Plaintiff’s expert may install malicious software or otherwise tamper with their computers. It also addresses Plaintiff’s concerns that the computers may be lost or destroyed. The Court finds the parties' initial negotiated process practical and appropriate.

As for an award of fees requested by Plaintiff, Defendants are right to be concerned about the security and confidentiality of their information on their desk top computers. For this reason, they are not required generally to pay the cost of Plaintiff’s expert, which Plaintiff was willing to obtain and pay for on its own from the outset. However, Defendants originally agreed to one course of action and then withdrew their agreement, causing significant delay and some expense to Plaintiff. For this reason, Defendants are ordered to pay the costs incurred by Plaintiff’s expert following the June 21, 2016 conference through June 30, 2016. Although Defendants have proposed a reasonable solution in first executing an ESI protocol before engaging in a forensic examination of their computers, Plaintiff is right to be concerned that Defendants will not stay with any agreed plan and, thus, were justified in seeking the Court’s assistance. For this reason, Defendants are ordered to pay the costs incurred by Plaintiff in bringing this motion. In addition, the Chemworld Defendants are ordered to bear the cost of the imaging of the hard drives. Each party shall bear the costs incurred in the use of a computer forensic expert.

CONCLUSION

Based on the foregoing, the Court hereby GRANTS in part and DENIES in part Plaintiff’s Motion for Order to Show Cause Why the Chemworld Defendants Should Not be Held in Contempt for Failing to Comply with This Court’s January 22, 2015 Order and for Sanctions [DE 386] and DENIES the Motion for Order to Compel an Electronically-Stored Information Protocol [DE 391].

The Court ORDERS the parties to confer and to execute an agreed-upon written ESI Protocol on or before September 23, 2016.

The Chemworld Defendants are ORDERED, at their expense, to have imaged the relevant Chemworld computers/hard drives for the purpose of locating pre-2014 emails and any other pre-2014 documents responsive to Plaintiff’s Request for Production No. 11 on or before October 7, 2016.

*4 The Court ORDERS that Plaintiff’s expert and Defendants' expert shall work jointly to develop a joint search protocol, with Plaintiff providing the search terms, that Defendants' expert perform the search with the participation and oversight of Plaintiff’s expert, and that the experts provide the search results to counsel for Defendants, who will have seven business days from the date he receives the results to conduct a privilege review.

The Court further ORDERS that the experts jointly investigate whether and to what extent pre-2014 emails are available through Go Daddy and, to the extent they are not available, the reason for the unavailability, including when and why the emails were deleted and/or otherwise became unavailable.

Subject to a privilege log provided by counsel for Defendants, the Court ORDERS that the experts shall provide to all counsel (but not the Court) a report of their findings, on or before October 28, 2016.

The Court ORDERS that each party shall pay the costs of its own expert. However, the Chemworld Defendants shall pay the reasonable costs incurred by Plaintiff’s expert following the June 21, 2016 conference through June 30, 2016, and the reasonable attorney fees incurred by Plaintiff in bringing this motion, including the reply brief. Plaintiff is ORDERED to FILE, on or before September 27, 2016, a Verified Statement of Costs, with supporting documentation, demonstrating these reasonable costs.

SO ORDERED 13th day of September, 2016.