The U.S. Trademark Trial and Appeal Board recently found itself channeling Stevie Wonder in a precedential decision denying Opposer Chix Gear LLC’s motion to compel certain metadata from Applicant Princess Race Wear, holding that because Chix Gear didn’t ask, it would not get.

Chix Gear sought an order compelling information about five photographs produced in response to its Document Request No. 9, which asks for “[a]ll documents evidencing Applicant’s claim that Applicant has priority over Chix Gear.”  Specifically, Chix Gear argued that metadata regarding the date the photographs were taken and the identity of the person who took the photographs are inherent in the request for “all documents,” and Chix Gear is therefore entitled to such metadata.

But what exactly IS metadata, and how does the Board handle requests for metadata?

The Board defined metadata as “[d]ata typically stored electronically that describes characteristics of ESI [electronically stored information] found in different places in different forms.  …  Metadata can describe how, when, and by whom ESI was collected, created, accessed, modified, and how it is formatted.  …  Some metadata, such as file dates and sizes, can easily be seen by users; other metadata can be hidden or embedded and unavailable to computer users who are not technically adept.  Metadata is generally not reproduced in full form when a document is printed to paper or electronic image.”

The Board then looked to the Federal Rules of Civil Procedure for guidance regarding the production of metadata.  Although Rule 34(b)(2)(E) does not specifically address metadata, a party may specify a form for production and request metadata in its discovery requests under Rule 34(b)(1)(C).  While it is “not bound by the instructions or preamble a party may attach to its discovery requests,” the Board noted that the definition section of Chix Gear’s discovery requests defines “documents” in part as “original and non-identical copies … including … photographs,” and the preamble makes no mention of ESI or metadata.  The Board also observed that there is no indication that the parties discussed how ESI would be produced or entered into any stipulations regarding ESI.  Based on its review of Chix Gear’s discovery requests, the Board determined that Chix Gear did not specify the form of production for ESI in its discovery requests, and did not specifically request metadata.

Pursuant to Federal Rule 34(b)(2)(E), if a request does not specify a form for producing ESI, as in this case, a party must produce it in a form or forms in which it is ordinarily maintained or in a reasonably usable form or forms.  However, Chix Gear did not argue that the photographs are not in the form in which they are ordinarily maintained or that they are not reasonably usable.  Rather, Chix Gear simply argued that Applicant Princess Race Wear did not provide information showing the date the photographs were taken and by whom.

Under this analysis, the Board concluded that “[t]here is nothing inherent in [Rule 34] requiring production of metadata where neither party has specified the form in which discovery will be provided, or where metadata has not been requested.”

The case is Chix Gear, LLC v. Princess Race Wear Corp., 2019 USPQ2d 455321 (TTAB 2019), Opposition No. 91243081.

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