Vaughan Company, Plaintiff, v. Global Bio-Fuels Technology, LLC and Richard Behnke, Defendants Civ. No. 1:12-CV-1292(DNH/DJS) Signed May 20, 2016 Counsel John D. Cook, Barclay Damon LLP - Syracuse Office, Syracuse, NY, Neil A. Benchell, Edward L. Bishop, Nicholas S. Lee, Bishop Diehl & Lee, Ltd., Schaumburg, IL, for Plaintiff. Richard Behnke, Golden Valley, MN, pro se. Stewart, Daniel J., United States Magistrate Judge ORDER *1 Presently before the Court is Plaintiff's Motion to Compel, seeking electronic discovery from the Defendants. Dkt. No. 162. That Motion followed various attempts to obtain the requested information voluntarily, including formal requests for the email accounts and the laptop in question, a conference between the parties pursuant to Local Rule 7.1, and a telephone conference with then-Magistrate Judge Randolph F. Treece on June 18, 2015. During this same time-frame, Counsel for the Defendants Global Bio-Fuels Technology, LLC, and Richard Behnke, moved to withdraw, which was granted on September 9, 2015. Dkt. No. 156. Since that time, the Defendants have not retained new counsel, nor have they supplied the requested electronic discovery. Initially, on September 2, 2015, the Court stayed all discovery so that counsel could be obtained, Dkt. No 157, however, the stay was lifted two months later after no counsel had appeared, Dkt. No. 161. After the present Motion was filed in early January 2016, a telephone conference was scheduled for January 25, 2016. Defendant Richard Behnke did not initially appear and when efforts to contact him proved futile, the Court held the conference in his absence. However, shortly after the conference ended, Mr. Behnke contacted Chambers and, after joining opposing counsel on the phone, the conference continued. See Text Minute Entry, dated Jan. 25, 2016. The issues of electronic discovery and Plaintiff's laptop and email account were specifically discussed by the parties, but Mr. Behnke maintained that he was not aware of the Plaintiff's Motion to Compel. Plaintiff agreed to email the Motion to Mr. Behnke, and the Court extended his time to respond to the Motion until February 1, 2016. On February 4, 2016, Defendant Behnke submitted a response, Dkt. No 171, to which Plaintiff replied, Dkt. No. 169. A. The Standard For Electronic Discovery Pursuant to Federal Rule of Civil Procedure 26(b)(2)(B), the Court must employ a balancing of the interests and burdens with regard to production of electronically stored information. Specifically, the Court must consider the costs and burdens imposed by the production upon the producing party. If the proper showing is made by the producing party, the Court may also consider limiting the disclosure, as set forth in Rule 26(b)(2)(C), if it is determined that the requested information is “unreasonably cumulative or duplicative, or can be obtained from some other source that is more convenient, less burdensome, or less expensive.” FED. R. CIV. P. 26(b)(2)(C)(i). Pursuant to the Federal Rules, the Court can also consider whether “the burden or expense of the proposed discovery outweighs its likely benefit, considering the needs of the case, the amount in controversy, the parties' resources, the importance of the issues at stake in the action, and the importance of the discovery in resolving the issues.” FED. R. CIV. P. 26(b)(2)(C)(ii).[1] B. The Laptop Computer *2 According to the submissions, it appears that Vaughan Company issued a laptop to Mr. Behnke, but that laptop was damaged in 2010. Dkt. No. 162-6, Behnke Dep., at p. 131. Defendant Behnke maintains that he sent that company-issued laptop back to Vaughan at that time, while Vaughan contends that they never received it. Dkt. No. 162-1. Thereafter, and for the last two years of his employment with Vaughan, Defendant Behnke utilized his personal computer for company business, and that is the computer he still uses to this day. Behnke Dep. at p. 131. Plaintiff maintained in the Complaint that Defendant Behnke utilized Vaughan's confidential files on his computer in order to underbid Vaughan on various projects. Dkt. No. 1, Compl. at pp. 6-10; see also Dkt. No. 62 at p. 5. Plaintiff further contends that Mr. Behnke transferred Vaughan files onto his personal laptop, and those files may or may not have been deleted. Dkt. No. 162-1 at p. 4; see also Behnke Dep. at p. 133. Plaintiff insists that certain documents produced in discovery during this litigation show that, after his employment with Vaughan, Defendant Behnke possessed numerous trade secrets of Vaughan that it believes were maintained in electronic format on Mr. Behnke's personal computer. Dkt. No. 162-1 at p. 5. In his Opposition, Mr. Behnke discusses at length the issue of the company issued laptop and its return to the company. Dkt. No. 171. However, he does not specifically dispute Plaintiff's contention that information relevant to the present lawsuit may be contained on his personal laptop. Id. Rather, his concern centers on the fact that other, possibly proprietary and possibly confidential information is also on the laptop. Id. It is noted that at his deposition, Behnke indicated that he would make the laptop available for inspection, and his counsel indicated that they would figure out the best procedure to accomplish that. Behnke Dep. at pp. 133-34. It also appears that at some point in time, an “image” of the laptop computer in question was taken. Dkt. No. 149, Status Report (noting that “on January 8, 2013, the drive was fully imaged using Acronis Backup, Data Protection and Recovery Software program and Semantics FTK (forensic tool kit) imager utility program”). In response to the formal demand for production of the laptop computer, however, Defendants are said to have objected to the production upon the grounds of relevancy and attorney client privilege. Dkt. No. 162-1 at p. 5. Is not clear to the Court, however, if the objections as to relevancy have been stated with specificity, or that a privilege log has been created by the Defendants as required under the Federal Rules. In light of the arguments presented by the parties and the specific allegations of the case, including the apparent loss of the company issued laptop, the Court concludes that the Motion to Compel production and inspection of Mr. Behnke's personal laptop should be granted. See Genworth Fin. Wealth Mgmt., Inc. v. McMullan, 267 F.R.D. 443 (D. Conn. 2010) (holding that an investment firm was entitled to utilize a computer expert to conduct forensic imaging of former employee's computer where it was alleged that the computer was used to download the firm's proprietary information and trade secrets). Here, the Plaintiff has established that relevant information will likely reside on the hard drive of the computer. Indeed, what resides on the computer may be critical to the Plaintiff's case to establish what, if any, confidential information may have been maintained and/or taken by Mr. Behnke prior to or after he left Vaughan's employment. The Defendants or their former counsel are the only ones in possession of the hard drive, and there is no other avenue for the Plaintiff to obtain the sought after discovery. The costs associated with the production of the documentation, and/or the laptop for inspection and copying, do not appear to be substantial. Finally, the Plaintiff's counsel has made good faith efforts to obtain the material, and avoid the necessity of the present Motion, all without success. Thus, the Motion to Compel production and inspection is, in the Court's opinion, properly granted. *3 Two additional issues need to be addressed with regard to the proposed production and inspection. First, it is anticipated that Plaintiff will employ a computer expert to extract the relevant information from the mirrored image of the hard drive. To do this, the expert must obtain an image. In this case, an image already exists and is apparently in possession of the Defendants' former counsel. However, it is unclear as to whether the Defendants also have a copy of that image. If Defendants have in their possession a copy of the image taken on January 8, 2013, then such must be provided to Plaintiff's designated expert. If Defendants do no presently have possession of that image, they must make arrangements to obtain the image from their former counsel and provide it to Plaintiff's designated expert.[2]Plaintiff is also authorized to create, at its cost, a new image of the Defendant's laptop. In that latter situation the parties shall make arrangements for creation of the mirror image in a manner that is the least disruptive to the Defendants' continuing business operations, but it must occur within three weeks of the filing date of this Order. Next, the Court must deal with the Defendants' claim that the inspection of the laptop hard drive will either disclose confidential, or personal and irrelevant, material. To protect against such disclosure, the Court directs that the Plaintiff establish search terms and criteria to be utilized by the expert to generate relevant information and that such terms be distributed to the parties. If the parties cannot agree on the search terms, the Plaintiff shall file the proposed search protocol on the Court's Docket so a ruling can be made. As part of the procedure, the Defendants must be given an opportunity to view the results of the search prior to its delivery to the Plaintiff, so that they can create a privilege log and assert any specific reasons for the non disclosure of a particular document or item. C. The Email Accounts At issue in this aspect of Plaintiff's Motion to Compel are two of Defendant Richard Behnke's email accounts: 1) gbtechnologies@hotmail.com and 2) behnke_ rotamix@msn.com. Dkt. No. 162-1. These accounts are different from the Defendant's work email with Vaughan Company, which was Rick.behnke @rotamix.com. Id. According to the Plaintiff, the Defendants have produced selected documents and emails from the personal email accounts of Richard Behnke, but did not do a comprehensive search of those accounts to locate documents responsive to the various discovery demands of the Plaintiff. Id. Plaintiff contends that the MSN account was utilized by Defendant Behnke in his capacity as director of mixing technology at Vaughan, despite direction from his superiors not to use that account. Id. Further, despite Behnke's contention that he did not use the MSN account since shortly after his resignation, see Behnke's Dep. at p. 143, the Plaintiff maintains that it has obtained emails from the account to contradict this assertion, Dkt. Nos. 162-1 at p. 3, and 162-5. In sum, Plaintiff asserts as follows: What is clear is that in the three years since Vaughan served its first set of document requests, neither of these email accounts have been searched, even though they contain relevant documents. In view of Defendants' failure to properly search these email accounts when first served with Vaughan's discovery request, Vaughan is entitled to inspect these email accounts now. Dkt. No. 162-1 at p. 3. Then-Magistrate Judge Treece previously addressed the issue of the two email accounts in June 2015. At that point in time, Judge Treece ordered that the Defendants determine if the email accounts still existed and provide an updated status report to the Court. Dkt. No. 148. In response Defendants' then-counsel, James Muldoon, Esq., indicated that he had reached out to the Microsoft Corporation, which appeared to be the operator of both the Hotmail and MSN accounts, and was awaiting a response. Dkt. No. 149. Despite a Text Order issued by the Court directing a status report on this issue, no further updates were provided and, as noted above, Defendants' counsel moved to withdraw shortly thereafter. Dkt Nos. 150 & 152. *4 In Defendant Behnke's response to the present Motion, he provides the Court no additional information regarding the inquiry with Microsoft, or whether he can in fact access the two email accounts at issue. However, Mr. Behnke now claims that the Hotmail account has been “hacked” and that the MSN account “has not been used in years.” Dkt. No. 171 at p. 3. Importantly, Mr. Behnke notes that both the MSN and Hotmail accounts had been set up to receive information or emails from the Vaughan Company server. Id. at p. 4. He concedes that Vaughan documents were taken through his email account, but he is not sure what information is on those accounts. Dkt. No. 169-3, Behnke Dep., at pp. 147 & 148. (“I do not know what's been deleted and what's on that thing.”). While Defendant Behnke did not search his email account, id. at p. 159, he opposes the present Motion seeking access and inspection. Not surprisingly, Plaintiff is not prepared to rely upon the representations of Defendant Behnke in light of all that has occurred to date. Rather, “[w]ith Behnke's assistance, Vaughan can determine the disposition of the email accounts and should be allowed to conduct the inspection if the accounts still exist.” Dkt. No. 169 at p. 4. The Court agrees with Plaintiff's position in this regard and directs that Defendant Behnke assist the Plaintiff's expert to review the status of the disputed email accounts, and to gain access to those accounts if that is possible. That assistance from Defendant Richard Behnke shall include, but is not limited to, providing passwords, resetting passwords, and contacting Microsoft. If Plaintiff's expert is able to access and image the accounts and therefore preserve their content, a protocol must then be established to review the contents of the email accounts and to produce only non-privileged documents that are responsive to the discovery demands of the Plaintiff. If no protocol can be agreed to, a proposed protocol should be submitted by Plaintiff to the Court for review and approval. Again, Defendant Richard Behnke shall, in the first order, be able to review the results of any search so that he may assert any necessary privilege. In the event that the accounts have been rendered inaccessible by the acts of the Defendants or anyone acting on their behalf, or material evidence has been deleted, Plaintiffs can make a motion for the appropriate sanction. See DeCastro v. Kavadia, 309 F.R.D. 167 (S.D.N.Y. 2015). For all the forgoing reasons, it is hereby ORDERED, that the Plaintiff's Motion to Compel electronic discovery (Dkt. No. 162) is hereby GRANTED; and it is further, ORDERED, that the Defendants shall make arrangements to obtain the image taken of Behnke's laptop and provide it to Plaintiff's expert; and it is further ORDERED, that Plaintiff's expert is authorized to make a mirror image of the Defendant Behnke's laptop hard drive and to inspect it pursuant to the aforementioned forensic review; and it is further, ORDERED, that Defendant Behnke shall assist and cooperate with Plaintiff's expert in order to gain access to the disputed Hotmail and MSN email accounts, so that they may be copied and inspected pursuant to the aforesaid protocol; and it is further, ORDERED, that the Clerk of the Court serve a copy of this Order on the Defendants by certified mail, return receipt requested. IT IS SO ORDERED. DATE: May 20, 2016. Footnotes [1] The Court notes that as of December 1, 2015, the Federal Rules regarding discovery have been modified. In particular, Rule 26(b)(1), defining the scope of all discovery, has been amended to delete the expansive phrase “reasonably calculated to lead to the discovery of admissible evidence” and replaces it with a rule of proportionality: Parties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense and proportional to the needs of the case, considering the importance of the issues at stake in the action, the amount in controversy, the parties' relative access to relevant information, the parties' resources, the importance of the discovery in resolving the issues, and whether the burden or expense of the proposed discovery outweighs its likely benefits. Information within this scope of discovery need not be admissible in evidence to be discoverable. Proposed FED. R. CIV. P. 26(b)(1) (emphasis added). [2] To be clear, if there are costs associated with the retrieval of that image, such costs are to be borne by the Defendants.