Intellectual Property Update - Screenshots from webpages held to be inadmissible hearsay by the Federal Court of Australia

Intellectual Property
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Screenshots from webpages are a quick and easy way to demonstrate use of a trade mark in infringement proceedings or disputes over ownership or non-use.  While screenshots (including records from the Wayback Machine archive service) are useful in the Trade Marks Office where the rules of evidence do not apply, caution is required when seeking to rely on this type of evidence in Court.

The admissibility of this type of evidence is often unchallenged but when it is, there is a risk it will be excluded.  This can, of course, have devastating consequences.

In Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No 2) [2017] FCA 474, Mortimer J held that screenshots taken by a lawyer for the purpose of showing use by other traders of the word SHAPE in relation to their businesses was inadmissible hearsay.

Her Honour said, at [24]:

'24. In my opinion the evidence sought to be adduced by the respondent is clearly hearsay within the meaning of s 59 of the Evidence Act. The statements made on various internet sites of other corporations or business entities … constitute a previous representation made by the person or persons who constructed the website, wrote the text and inserted the graphics. The purpose of adducing evidence of those statements of text and graphics is to prove the existence of a fact it can reasonably be supposed was intended by the drafter of the text and the person who constructed the graphics. The fact is that there were business entities trading on the dates specified (between August and October 2016) in the industries and markets set out on the pages exhibited by Mr Henry, in the locations those webpages identified using the names those webpages identified. It is the actual existence of those business entities, the names they were using, the industries and markets in which they were trading, the services they were offering and the locations in which they were offering those services which the respondent in my opinion seeks to use as part of its case to prove that there was no confusion in the marketplace generated by its use of the word “shape” in SHAPE Australia.'

Similarly, in Clipsal Australia Pty Ltd v Clipso Electrical Pty Ltd (No 3) [2017] FCA 60 at [258], Perram J ruled that screenshots from a webpage were inadmissible hearsay (and that the business records exception did not apply – see also ACCC v Air New Zealand Ltd (No 5)(2012) 301 ALR 352 at 356 [15]).

In contrast, in the following recent cases, screenshot evidence was accepted (and in most cases relied upon by the judge) without objection.  (My search was limited to Federal Court cases, no doubt there are many more across the other jurisdictions).

In Crescent Funds Management (Aust) Ltd v Crescent Capital Partners Management Pty Ltd [2017] FCAFC 2, no objection seems to have been taken to evidence consisting of screenshots and the Full Court (Greenwood, Edelman and Markovic JJ) made no comment about it: see at [91] and [92].

Similarly, in ACCC v Valve Corp (No 3) (2016) 337 ALR 647, Edelman J (as a judge in the Federal Court), in the absence of any objection, “particularly” relied “upon the evidence of Ms Liskov [an ACCC investigator] as to what a consumer would have seen or done (including her careful inclusion of screenshots of many of these steps)”: at [12].

In ACCC v Hillside (Australia New Media) Pty Ltd (t/as Bet365) [2015] FCA 1007, screenshot evidence was heavily relied upon and accepted by Beach J in determining that the respondent had contravened the Australian Consumer Law.

In Buchanan Turf Supplies v Registrar of Trade Marks (2015) 114 IPR 81, Yates J accepted screenshot evidence apparently without objection.

In Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235, Beach J accepted and relied upon screenshot evidence – apparently without any objection, though hearsay objections were taken to other parts of the evidence in that case.

A more comprehensive review is needed but this small selection is sufficient to show how common screenshot evidence has become.  Despite these cases where such evidence has been accepted, I have not (yet) found a case where the question has been considered and a judge has found it to be admissible.

The leading statement of the rule against hearsay is (Subramaniam v Public Prosecutor [1956] 1 WLR 965 at 970):

'Evidence of a statement made to a witness by a person who is not himself called as a witness may or may not be hearsay. It is hearsay and inadmissible when the object of the evidence is to establish the truth of what is contained in the statement. It is not hearsay and is admissible when it is proposed to establish by the evidence, not the truth of the statement, but the fact that it was made.'

In that case, the appellant was charged with being in possession of firearms without a lawful excuse and his defence was that he was acting under duress in consequence of threats made by Malayan terrorists.  The trial judge would not allow evidence of what the terrorists had allegedly said and he was convicted.  The Privy Council quashed the conviction because the reported statements of the terrorists  were tendered as original evidence and ought to have been received as such.  They were not tendered as evidence of their truth but simply for the fact they were made.

This is the proper test for screenshot evidence as well.  If the screenshot is being tendered for the truth of a statement it carries, it will be inadmissible hearsay.  But if it is being tendered simply for the fact that the relevant statement or representation was made, then it is admissible as direct evidence.

This means careful thought should be given to the precise purpose of the evidence. There is no such thing as hearsay – only hearsay uses.

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Benjamin Gardiner Headshot

Ben Gardiner KC practises primarily in intellectual property litigation

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