Discovery documents traditionally came in one simple form – paper – and production was a matter of physically copying those documents.

Today, the majority of original documents in most commercial cases are electronic – emails, Word documents, images – and there are a lot more of them. This has prompted a change in how documents can be most efficiently discovered.

There are 3 main ways (in terms of format) to exchange documents in a modern discovery:

1. Printing all documents to paper
2. Scanning / converting documents to PDF
3. Providing documents in native format.

The new High Court Rules, in effect since February 2012, mandate electronic discovery as the default process. This requires the use of either or a combination of options 2 (scanning) and 3 (native format).

While the new rules remove any “argument” over whether discovery should still carried out physically, there are good reasons anyway for providing discovery electronically (which are the rationale for the new rules, as well as the reason why many firms have elected to provide documents electronically for some years), including:

• Most modern documents originate in electronic format.
• A printed version of an electronic document is not the same as the original document, which is what must be discovered.
• A number of electronic documents cannot be printed anyway, e.g. audio/video files.
• It can incur considerable unnecessary effort and cost to print documents.
• The sheer volume of documents can result in a “paper war” if multiple copies of vast amouts of documents are printed, collated and bound.
• It is more environmentally friendly.

In addition:

• A printed version of an electronic document loses information about the document (e.g. hidden comments, document properties, cell formulas, etc) that may be properly discoverable.
• Printed documents can no longer be searched.
• Electronic documents can be handled in an e-discovery system such as LawFlow.

Some firms are currently in the practice of essentially carrying out discovery manually (i.e. on paper) and then scanning (or re-scanning) documents back into electronic versions. Unfortunately this can be a very inefficient way to go about the task.

The case centres on whether or not copyright exists in an API – Application Programming Interface. APIs are a bit like the “rules of grammar” of modern programming languages and platforms, and are absolutely critical to writing code for everything from web browsers to mobile phones to desktop PCs. They specify function names and communication protocols to allow interaction and provide functionality to other programs.

Oracle, which owns Java – the world’s most widely used programming language – claims that Google has infringed its copyright by developing its own implementation of Java’s API for use with its Android operating system. The particular allegation is not that Google has actually copied the language, but has created a system that “mimicks” Java by implementing a compatible API.

Oracle claims, in rather “sweat of the brow” terms, that this has infringed its copyright:

Designing the APIs for a complex structure like the Java platform requires a great deal of creativity and skill… Many articles and books are dedicated to the techniques and considerations involved in writing APIs. If APIs are written well, they create a beneficial cycle. A well-designed API is easier to learn and use, so developers will be more likely to adopt the platform and write more applications, creating more appeal to the platform for end users, which in turn attracts more developers. …

Copying the core Java APIs saved Google “an enormous amount of time.” And Google’s expert opines that it would have been “very difficult for Google” to persuade developers to switch to different APIs. …

Google got down to work and began implementing not only the Java programming language and overall “write once, run anywhere” architecture, but also copying the core Java API specifications… When Google finished its copying, it proclaimed on the Android developer website: “Android includes a set of core libraries that provides most of the functionality available in the core libraries of the Java programming language.”

Google denies that copyright exists in the API in the manner asserted by Oracle. Broadly, one of its key arguments is premised on the fundamental principle that copyright protects only the expression of ideas, not the idea itself:

… the only similarities between the Accused Packages and the Java language API packages lie in the specifications for those APIs. But similarities in only “functional specifications,” as opposed to the program logic that performs the steps required by those specifications, are not copyright infringement. …

Oracle has alleged that Google “copied” the names of the Java language APIs at issue. But the names of the Java language API files, packages, classes, and methods are not protectable as a matter of law… Moreover, the names merely describe the functionality of the packages and methods, and/or otherwise are the result of customary programming practices.

As is to be expected with such a fight between two of the major tech heavyweights, there will be many rounds yet to go before this is finally sorted out. But a lot is potentially at stake if Oracle’s claim succeeds – it could claim billions of dollars of licensing fees from Google and other companies who have created or adapted languages based on Java.

Of broader reach, API owners could potentially attempt to prevent anyone else – including in New Zealand – from making or using a compatible “infringing” language or system, without obtaining a licence:

Should this come to pass, numerous products will suddenly find themselves on an uncertain legal standing in which the previously benign but now newly empowered copyright holders might assert punitive copyright claims. Chief among these would be any re-implementation of an existing language…

Essentially, every language implementation not issued forth by the copyright holder will be suspect until the copyright owners announce a permanent statement dispensing with any threats to enforce the copyrights.

A worst-case scenario like that makes even the worst software patent scenarios look positively innocuous, in particular given that copyright is (essentially) global whereas patents are territorial.

On the other hand, the final outcome could determine that copyright does not subsist in certain or all aspects of APIs (at least in that particular jurisdiction, and pending appeals, etc). This certainly would be vastly preferable to the uncertainty that could otherwise ensue.

UPDATE

Computerworld reports:

Europe’s top court ruled on Wednesday that the functionality of a computer program and the programming language it is written in cannot be protected by copyright…

The result is that the court finds that ideas and principles which underlie any element of a computer program are not protected by copyright under that directive, only the expression of those ideas and principles.

Apple and Microsoft will be among technology companies asked to explain to Parliament why Australians pay much more for music and game downloads from iTunes, for example, than overseas customers.
…
The debate over pricing surfaced again last week when global software company Adobe revealed Australians would pay up to $1400 more for the same software compared with US residents

Companies are generally free to set whatever prices they want (as long as their are no anti-competitive issues), which is perfectly valid. It is equally valid for the Australian parliament to ask some hard questions. Whatever comes out in the inquiry is just likely to apply on this side of the Tasman.

Many companies have done very well from the borderless marketplace of the internet. But that can cut both ways, as Adidas found out last year with the All Black jersey row. Traditional regional markets with differential pricing are increasingly difficult to maintain, which in turn has implications for regional sales, support and licensing arrangements.

LawFlow is an e-discovery system designed and developed in New Zealand, that supports local requirements such as the new High Court Rules on e-discovery. Check out the website at www.lawflow.co.nz for more information.

I have been involved in the development of e-discovery, litigation management and online workflow systems for over 10 years, and I am pleased to be involved in the development of LawFlow which now provides New Zealand firms with a local option for carrying out the often difficult and time-consuming task of discovery. In particular, as LawFlow is designed and developed right here in New Zealand, I look forward to helping to continue to improve and adapt the system to meet local requirements based on user feedback.

Some quick highlights of LawFlow:

• Generate discovery lists and electronic bundles of documents that comply with New Zealand requirements;
• A fully web-based solution hosted in New Zealand – no software to install or maintain, can be accessed on any computer, notebook or tablet, and your data stays right here in New Zealand;
• Allow authorised staff, Counsel and clients to access discovery documents anywhere, anytime;
• Redact documents directly from your web browser;
• Secure storage for discovery data, from the start of a proceeding right through to its conclusion.

Unlike many overseas providers, LawFlow’s pricing is available right on its website. And, there is currently an offer for a free trial – so you can upload your documents into LawFlow and actually trial it on your documents, at no cost.

I will blog more in future on LawFlow, and e-discovery generally, via the LawFlow website.

One feature is the ability to safely redact PDF documents directly in a web browser.

Redaction is increasingly important in New Zealand civil litigation, given the volume of documents and the propensity for sensitive and/or privileged information to be mixed with other discoverable information. The High Court Rules (current and new) allow redaction of certain information on the grounds of confidentiality and/or privilege. Conditions can be proposed by the disclosing party to protect confidential information – for example, the provision of certain documents (redacted or not) may be made on an “attorney’s eyes only” basis (to adopt the US parlance; in practice it often extends to experts too). Other parties can challenge the proposed restrictions, however this requires them to bring an application to do so, and in practice such issues can usually be resolved without the Court’s intervention.

The new High Court Rules will generally mean that documents must be redacted electronically, in PDF format. In practice, there are 3 key challenges to doing so:

1. Making it easy – ideally, the lawyer will be able to make their own redactions directly on each PDF while viewing it anywhere and any time, without the need to install separate standalone software and without any fuss. In particular, this avoids the  inefficient and obsolete process of printing documents, manually redacting them, and then re-scanning them.
2. Making the redactions permanent and secure – there are many real-world examples of unsafe, or non-permanent, redactions, where an apparently redacted document still allows the underlying text to be easily retrieved (read about a recent example – by a judge! – here).
3. Handling duplicates – there is no point redacting one version of a document, only to have a duplicate produced in original form.

Safe and easy PDF redaction (via the browser) is one of the features of the New Zealand developed e-discovery solution that will be announced soon. Stay tuned for more information in coming weeks.

Meanwhile, it seems that lobbying efforts to overturn the unanimously endorsed software patent exclusion have, so far, fallen on deaf ears. At the NetVision 2011 Election Debate held on 18 October, both National (via Steven Joyce) and Labour (via Clare Curran) confirmed that their parties remained committed to the software patent exclusion as recommended by the Commerce Committee. The Greens also confirmed it as their policy.

Video of the event is available here, with the discussion on software patents starting at around 28:20 of part 2.

New High Court Rules (and District Court Rules) promoting the use of electronic discovery come into force on 1 February 2012. Key features of the “default” regime under the new rules include the following:

• Discovered documents must be exchanged electronically.
• Parties must provide a standardised list of discovered documents.
• Documents must be provided in PDF format (unless not possible for particular file types), with the document number as the filename.
• Native files must be provided if requested.
• Parties must take reasonable steps to exclude duplicates.
• Emails and attachments are to be listed separately but sequentially on the document list.

These changes reflect the ever-increasing volume of data (in particular, electronic data) in modern litigation, and the need to effectively and efficiently handle the discovery process.

A New Zealand solution

This new regime requires a new solution. Stay tuned for an announcement of a new web-based electronic discovery system developed right here in New Zealand, that supports the new rules on electronic discovery as well as providing early case assessment and detailed review capabilities. This system has been locally developed over the past several years.

Key features include:

• New Zealand designed and developed system, cognisant of the new High Court Rules on electronic discovery
• Fully managed, web-based solution – no software to install or maintain, and can be accessed on any computer, notebook, or tablet
• Handle projects ranging from a few dozen, up to hundreds of thousands of documents
• Securely access, review and upload project documents anywhere, anytime
• Track discoverability, privilege, confidentiality, and other document attributes
• View common document formats in any standard web browser without the need to install Office software
• Powerful search and analysis capabilities across the document repository
• Generate discovery lists and electronic bundles of documents (native format or converted to PDF, stamped with document numbers)
• Automated handling and de-duplication of Outlook email archives and common document types
• Single-user or collaborative multi-user options (including the ability for clients to upload their own documents)
• Fully locally supported
• Customisable by a local development team
• And much more!

Check back for more information in coming months.

(features described are subject to change before the system is publicly launched)

Online Defamation

Kiwiblog noted an interesting Canadian defamation case (Baglow v Smith) involving defamation on political blog sites:

On 30 August 2011 the Ontario Superior Court of Justice handed down judgment in the case of Baglow v. Smith, 2011 ONSC 5131. The decision suggests that an allegedly defamatory statement made in a debate on a blog or internet forum may not be found to be defamatory if the plaintiff previously engaged in the debate but did not respond to the statement despite having the opportunity to do so.

Canadian law firm Heenan Blaikie has a summary of the case here:

At the risk of over-simplifying the matter, the court’s decision can be summarized as this: there is something meaningfully different about online statements, particularly those which are made on political blogs and discussion forums, which militates that they be treated differently for purposes of defamation law. Put somewhat differently (and, again, with the qualification that this over-simplifies matters): impugning someone’s name on the broadcast evening news is different from impugning their name on a blog.

New Zealand courts give weight to Canadian judgments, and it will be interesting to see whether this case is raised in a New Zealand defamation proceeding in due course.

Amazon’s “one click” patent reaffirmed in NZ

Amazon’s infamous “one click” patent has been reaffirmed in New Zealand by a decision of the Commissioner of Patents, Amazon.Com, Inc v Patrick Ryan Costigan [2011] NZIPOPAT 12 (21 July 2011). The opposition to the patent does seem to have been somewhat quixotic – the opponent was not represented at the hearing, whereas Amazon had a team headed by a QC appear to defend its patent, as well as evidence from US and Australian patent experts. The Commissioner also noted that the patent had been upheld in Australia.

Google cleared in Australian ad-word case

The Australian Competition and Consumer Commission – the equivalent of NZ’s Commerce Commission (but rather tougher, it has to be said) – has lost a case it brought against Google alleging that Google engaged in misleading and deceptive conduct by mixing ads into its search results. The Court also found Google had not breached trade practices law by using (or allowing the use of) competitors’ names and trademarks in sponsored links. The full 73 page judgment is here.

UK Govt asks for Search Engine De-optimisation

Computerworld reports:

Google and other search engines, including Microsoft Bing and Yahoo, will be asked by the UK government to push copyright-infringing websites down their search results under new plans.

Which sounds like it could open a can of worms… The article also notes:

… it is understood that there could be forthcoming legislation, within the Communications Bill, if an industry-run solution is not found.

Which will certainly be a can of worms.

Watch the UK Supreme Court live

In what is understood to be a first, the UK Supreme Court (which in 2009 replaced the House of Lords as the UK’s highest court) now transmits a live coverage of hearings. This is a good step forward for open justice, because while most court hearings are open to the public, they are usually rather inaccessible. The Supreme Court coverage is available here streamed via Sky UK.

… notification should be mandatory in cases where notification will enable people to take steps to mitigate a risk of significant harm, or where the breach is a serious one (for example, because the information is particularly sensitive).

Notification should be made to the individual whose information has been compromised, and also to the Office of the Privacy Commissioner.

This would be a major – and welcome – change from the status quo, which is that agencies (e.g. companies holding personal information) are generally under no legal obligation (unless such obligation is assumed) to report data breaches. Sir Geoffrey Palmer commented on the situation last year:

Another subject on which we are contemplating some changes is data breach notification… Currently holders of personal information, both public and private sector agencies, are under no legal obligation to notify individuals or the Privacy Commissioner when an individual’s personal information is compromised – if, for example, it is lost or obtained by computer hackers. … This means that agencies are not required to notify individuals whose personal information has been compromised, no matter how sensitive the information and no matter how serious the risk of harm that could be suffered as a result.

(The Law Commission’s issues paper discussing data loss is here). The recommendation comes at the same time as the EU is grappling with imposing a uniform notification regime across member states.

A data breach notification regime, while imposing some compliance cost on organisations, is a necessary thing in today’s world.

Recently I had my own example of when such a regime might have been useful, when my bank informed me that I had “suspicious activity” on my credit card – a large transaction from Portugal. What was curious was that I had only had that card for a few months, and had not used it much at all (and not online at all). The card could have been physically copied somehow, but if one of the few merchants who I had used it with had lost the data via hacking, there is no obligation for them to advise me of the loss – nor any other information that may have been lost with it.

The example of credit cards was specifically mentioned by Law Commissioner Professor John Burrows in announcing the recommendation:

“People have a right to know if their information has been compromised in a serious way”, said Law Commissioner Professor John Burrows. “Then they can take measures to protect themselves (such as cancelling credit cards), or can at least prepare themselves for any consequences of the breach.”

It will be interesting to see how the details of such a regime are eventually formulated.

They also appear to have sifted through several submissions from patent attorneys that sought to relitigate the Bill itself in amusingly emotive terms, rather than just comment on the guidelines as requested.

IPONZ has provided a clear, concise note. Some extracts:

31. Many of the interested parties who made submissions on the draft guidelines argued that the Commerce Select Committee intended that so-called “embedded” computer programs should remain patentable, with other “non-embedded” computer programs being excluded from patent protection. However, it is clear from the Committee’s report that the Committee rejected the idea of making a distinction between “embedded” and “non-embedded” computer programs in this way.

32. Instead, the Committee decided to recommend a simple exclusion, as this would exclude computer programs from patent protection, but would not prevent the grant of patents for inventions involving “embedded”computer programs. It seems clear from these comments that the Committee did not intend that the mere fact that an invention involves a computer program should be sufficient, in itself, to make an invention unpatentable.

That is exactly right. For whatever reason, some patent attorneys seemed to have great difficulty with that simple proposition, and much of the FUD being put out by those looking to overturn the software patent exclusion focused on the apparent “confusion” surrounding embedded software. The explanatory note succinctly summarises the Committee’s clear recommendation.

33. On this basis, computer programs are not patentable under clause 15(3A), whether or not they are “embedded” programs. However, inventions that involve a computer program (as opposed to inventions which are a computer program) are likely to fall outside the scope of clause 15(3A) and be patentable.

Which is how other patentable inventions, containing non-patentable constituent parts, are treated.

34. … The exclusion cannot be avoided by claiming the program in combination with conventional computing hardware. Such claims are effectively claims to the computer program and allowing them would circumvent the purpose of the exclusion.

35. For example, claims to the computer program when running on a suitable computer, or claims to the program recorded on a carrier such as a disk or memory card would not be allowable. On this basis claims of the form “a computer program product comprising computer program code adapted, when loaded on a computer, to do X” (so-called Beauregard claims) will be rejected.

This is good. There can be a lot of nonsense to try to avoid exclusions. By definition, all software runs on a computer, so a claim that the invention is the program “when running” should hardly be expected to avoid a computer program exclusion.

One thorny issue on the periphery of the software patent debate is business method patents. They are really a separate issue (controversy). The note makes a only few comments on them, including:

41. Where the contribution is assessed as a method or process that falls outside the computer program exclusion, claims to a computer program that would cause a suitable computer to carry out the method may be allowable.

The progress of the Bill remains understandably low priority, and its future is also somewhat uncertain given that a new Minister will take over the Bill from Simon Power. However MPs at last month’s NetHui said that Simon Power had that week advised that the software exclusion would remain (confirming earlier statements).