What you need to know
- The Respondent, Shape Australia, sought to rely on screenshots of the results of internet searches relating to certain third party websites, in order to prove the fact that there were business entities trading on certain dates using particular names.
- The Federal Court held that the screenshots were hearsay and inadmissible. The judge said the material would have been excluded in any event, on the basis that its probative value was substantially outweighed by danger of prejudice. The screenshots were considered to provide merely a “snapshot”, only demonstrating what the individual in question was able to access on a particular date, without providing sufficient context or the ability to test the evidence.
What you need to do
- Caution should be taken when seeking to rely on screenshots of internet searches as evidence, including in relation to archived material obtained via sites such as the “Wayback Machine”. The admissibility of such evidence will likely be difficult to establish in forums where the rules of evidence apply.
Background
This decision related to objections made to affidavit evidence under the Evidence Act 1995 (Cth) (Evidence Act). The proceeding was commenced by Shape Shopfitters Pty Ltd (Shape Shopfitters) in relation to conduct of Shape Australia Pty Ltd (Shape Australia). Both Shape Shopfitters and Shape Australia are commercial construction companies, trading under these names since 2012 and 2015, respectively.
Shape Shopfitters alleged that by using “SHAPE” in its corporate name, marketing and advertising, Shape Australia had made a false representation that there was an affiliation, connection, association or relationship between the parties (contrary to the Australia Consumer Law and the tort of passing off). In particular, Shape Shopfitters claimed that given the similarity of the names, an obvious conclusion is that Shape Shopfitters is the specialist shopfitting arm of Shape Australia, which is not the case. In addition, Shape Shopfitters alleged that Shape Australia had infringed its registered trade mark by promoting and selling commercial construction services using the name “SHAPE”, via a series of marks.
Evidence
In defending the claims, Shape Australia led evidence comprising printouts of ASIC and Australian Business Register records of other entities with the word “SHAPE” in their name. This evidence was not objected to, presumably because these results comprised public records. However, Shape Australia also sought to lead evidence of screenshots of internet searches (resulting from search terms such as “shape building” and “shape development”). The apparent purpose of these searches was to demonstrate the proliferation in the marketplace of the use of the word “shape” by other businesses at the same time. Some of the evidence in question relied on an internet search of archived material sourced via the “Wayback Machine”, a digital archive allowing users to see archived versions of web pages across time.
In objecting to this internet screenshot evidence, Shape Shopfitters contended that all the evidence was able to demonstrate was that when one logged onto a website at the particular date indicated, the screenshots show what appeared on the webpage at that date. It argued that:
- The evidence ought to be excluded under s 135 of the Evidence Act, on the basis that the probative value of the evidence was substantially outweighed by the danger that the evidence might be unfairly prejudicial. Shape Shopfitters considered this evidence to be unrepresentative (as it showed only the use of a word on a particular date on a particular website), and failed to establish the impact of the Shape Australia’s adoption and use of the name SHAPE.
- The evidence was inadmissible hearsay, in that the purpose of tendering it was to prove that the statements contained within the screenshots were true. Shape Shopfitters said the evidence was intended to prove that, on the date specified, the corporate entities named were indeed using a business or trading name that included the word “shape”.
Decision
Justice Mortimer found that the internet search evidence was hearsay within the meaning of s 59 of the Evidence Act. Her Honour considered that statements made on various internet sites of other business entities constitute a previous representation made by the person/s who constructed the website, wrote the text and inserted the graphics. The purpose of adducing the evidence was to prove the existence of a fact, ie that there were business entities trading on the dates specified, and in the particular industries and markets, using the names identified by the webpages.
Justice Mortimer also indicated that, even if the material was not hearsay, it should be excluded on the basis that the probative value of the evidence was substantially outweighed by the danger of the prejudice. In this regard, her Honour accepted Shape Shopfitter’s submission that the evidence constituted no more than a “snapshot” of what was available through a series of internet searches on a particular date, without any context available to be tested regarding the nature of the businesses identified by the search results. The screenshots were presented without calling evidence from witnesses who operate or control those businesses, nor allowing Shape Shopfitters an opportunity to test similarities or differences between those particular businesses and its own.
Conclusion
The use of screenshots from websites, including from the “Wayback Machine”, is common practice in intellectual property disputes, particularly in the Trade Marks Office. However, care should be taken when seeking to rely on such material in forums where the rules of evidence are strictly applied.
Authors: Lisa Ritson, Partner; Jordan Clitheroe, Lawyer.
