Bierce & Kenerson, P.C. share their version of the electronic-discovery process in a recent post to the firm's Outsourcing-Law.com blog,[1] which they refer to as the "Electronic Discovery Resource Model, not to be confused with the Electronic Discovery Reference Model ("EDRM"). Bierce & Kenerson's diagram provides another way of looking at the e-discovery process and may be more user friendly for some lawyers.
[1] Bierce & Kenerson, P.C., E-Discovery and Legal Process Outsourcing: ESIM Process Design and Choices between Outsourcing vs. Insourcing, Periodical Name, Dec. 21, 2009, available at http://www.outsourcing-law.com/2009/12/e-discovery-and-legal-process-outsourcing-esim-process-design-and-choices-between-outsourcing-vs-insourcing/ (last visited on Dec. 31, 2009).(Note, the title when I originally visited the post was E-Discovery and Legal Process Outsourcing: EDRM Process Design and Choices between Outsourcing vs. Insourcing but some changes were made to the post, including the title.)
Although Bierce & Kenerson has not yet responded to our requests to modify their posting, attributing EDRM (edrm.net) as the source of their "Electronic Discovery Resource Model," even a cursory glance at their diagram and materials ought to make the source abundantly clear.
We have sent email messages and left a voice message at their generic number (I did not see any phone numbers for individual attorneys) but have not received any response.
Thank you,
George Socha
Interesting, it seems that they have changed their post since I visited it yesterday (Taiwan time, early morning US Eastern). Looking at the version I captured in Evernote and which is still cached by Google, they attribute the EDRM as the source, even providing the trademark registration number:
The current version of the post (as up 3:30 AM Taiwan time) does not have this attribution. And reads:
Which of those two versions did you see when you first reached out to them? I find it strange that they would REMOVE the attribution after you contacted them. I wonder if they changed it to the version I first saw (I didn't view it until about a week after it was first published) and it somehow reverted back to the prior version without the attribution (the second version I saw, just a few minutes ago).
I didn't hear of the firm until this post popped up in my Google Alerts, but as still-green blogger still learning the ins and out of my blog platform, and having seen other bloggers I follow having weird things happen to their posts, I'm will to give the benefit of the doubt and blame the technology. Tis the holiday season and all.
Anyway, I hope it all gets sorted out. Can't believe I am chatting about this on New Years Day. :-) [Although, the New Years that really counts here in Taiwan is in mid-February.]
Mr. Bierce is listed in Martindale-Hubble, so I made a courtesy call the firm and left a message, referencing this post. I'll bet it there was tech. glitch, reverting to an older version of the post, but we'll see.
Typo, should have been "Martindale-Hubbell" not "Hubble" ... its late, I guess I'm feeling a bit "spacey." ;-)
Paul,
The diagram posted by Mr. Bierce on December 21 contains the following attribution at the bottom of the diagram: "Source: www.Outsourcing-Law.com © 2009 Outsourcing Law Global, LLC and William B. Bierce."
If you can view that diagram you will see an unmistakable resemblance to the EDRM diagram that can be found at http://edrm.net.
If there is a version of Mr. Bierce's diagram that contains proper attribution to edrm.net, I would appreciate assistance in finding it.
Regards,
Tom Gelbmann
Paul,
I never saw what I gather is the earlier version, with the reference to our trademark application. I just checked their site and could not find any reference to edrm.net.
I have not received any response to any of the messages I sent them, but as it is New Year's Eve here (and whatever time it is in Taiwan!) I do not expect to here from them today.
Thanks and have a good New Year's Day,
George
They have modified their post.
Dear Paul:
I congratulate you in blogging on this topic. It is time to take a fresh look at what “EDRM” means and whether anyone has the right to limit its use in commerce to describe different work flow algorithms in Electronic Discovery.
NEW DIAGRAM. On January 4, 2010, the original ESI workflow diagram posted at www.outsourcing-law.com was replaced by a much more complex diagram offering a holistic approach. The replacement bridges the gap between reactive compliance (which I consider the Socha-Gelbmann diagram describes) and proactive compliance (which the Outsourcing-Law.com™ diagram describes). The Outsourcing-Law.com™ replacement portrays the interplay of governance, risk management and compliance. It introduces concepts of process improvement and transformation. This more complex diagram identifies many more process nodes, phases, do-loops (iterations), sources and concepts than the Spartan Socha-Gelbmann diagram. (Even the original Outsourcing-Law.com™ diagram had a lot more words and a different flow and structure than their diagram).
ORIGINALITY. I respectfully contend that the new Outsourcing-Law.com™ diagram meets the standards of originality for copyright protection. This new diagram reflects original insights from over 30 years experience in corporate law (including corporate governance), commercial transactions (including relationship governance), outsourcing, information technology and Internet law, projects for software development, ERP and Y2K, business process management (and process transformation), knowledge management, compliance in the supply chain and litigation management. It also reflects a 17-point work flow diagram that I designed in 2004, in connection with a patent application by another outsourcing lawyer turned consultant who can vouch for this. Mr. Socha’s posting at 4:43 AM January 5, 2010 (not sure which time zone applies) acknowledges the new Outsourcing-Law.com diagram. He and Mr. Gelbmann are silent whether it infringes, so I conclude they acknowledge the originality and will let it pass.
WHO CAN USE “EDRM” AND DOES EVERYONE HAVE TO BOW TO WWW.EDRM.NET BEFORE INNOVATING? I would ask them to consider the limits of their legal claims. Maybe they might acknowledge several limitations:
1. TRADEMARKS. Their use of the letters EDRM should not be exclusive because it is generic (using a popular abbreviation, such as ESI, ERP, CRM, ITO or BPO, that is used in common parlance among business executives, information technology managers and lawyers) and descriptive (describing their particular model). As I read trademark law, they are entitled only to exclusive use of the graphic. They should disclaim (in their trademark application) any exclusive right to use the words ELECTRONIC DISCOVERY or RESOURCE MODEL other than in association with the graphic mark. I believe that EDRM is susceptible to multiple meanings and perspectives, including (i) Electronic Discovery Response Management, (ii) Electronic Discovery Records Management, (iii) Electronic Discovery Resource Management, (iv) Electronic Discovery Response Model and (v) Electronic Discovery Resource Model. They should also disclaim any right to use the letters “EDRM” as a means of preventing others from having a different ELECTRONIC DISCOVERY RESOURCE MODEL. (I have no objection to their calling it the SOCHA-GELBMANN ELECTRONIC DISCOVERY RESOURCE MODEL, but they have no right to claim exclusivity over any other such model using the same 4 words.) Their trademark application, without such disclaimers, is just an attempt to usurp plain usage in the English language, as cited on Wikipedia and tons of Google hits that EQUATE “EDRM” with the English words ELECTRONIC DISCOVERY RESOURCE MODEL. Because of such generic and descriptive qualities of their wording and abbreviation, others should have a clear legal path to the same words and the same letters without fear of an infringement or dilution suit. Without such disclaimers, they should not be granted their pending trademark application. See TMEP Part 1200.
2. COPYRIGHTS. I believe copyright does not protect workflows as a process. If they truly believe they have some exclusivity in the FUNCTIONS listed by their diagram, I refer them to the Apple v. Microsoft litigation (where Microsoft’s use of the same or similar user interface functions such as FILE, EDIT, VIEW, INSERT, FORMAT, TOOLS, etc. was permitted to co-exist with Apple’s antecedent copyrighted identical user interface, since such words are FUNCTIONAL). The work flows depicted in the Socha-Gelbmann diagram appear to follow the ground-breaking Zubulake decisions and other case law and civil procedure rules that define essential legal compliance functions in the E-Discovery process. Such work flows are mandates. Copyrights do not protect functionality in mandates.
3. PATENTS. It is my understanding that copyright cannot protect novel and useful ideas, functions or processes as such, which need patent protection. When last I looked, neither Mr. Socha nor Mr. Gelbmann owns any U.S. patent. They might want to consider the impact of several U.S. patents for processes that sound very similar to the Socha-Gelbmann model. These patents include, for example, a “rule compliance system and a rule definition language,” “modeling standards validation tool for use in enterprise architecture modeling,” “resource management method and system with rule-based consistency check,” “integrated tool for compliance testing within an enterprise management system” and “compliance rules analytics engine.” Clearly knowledge management, governance, risk-management and compliance are big business and attract entrepreneurs who want to protect their investment and innovation through business process patents.
I respect their rights. In turn, they need to limit their claims so that the E-Discovery, IT, Compliance, Governance and Risk Management industries can innovate. Let’s have a debate about a more holistic view of whatever EDRM stands for, not one limited to core functionality of reactive compliance in their limited diagram.
Thank you for visiting the site and sharing your views on this matter.