Screenshots from webpages held to be inadmissible hearsay by FCA

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]:

  1. 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.




Evidence, Trade Marks Office procedure

Evidence in the Trade Marks Office – Common problems – Part 1

Preparing evidence for opposition proceedings in the Trade Marks Office has its own set of traps for the unwary. Over the next few posts, I will highlight a few common weaknesses in TMO evidence.

Error #1: Ignoring the priority date

For most grounds of opposition, the critical date is the date of lodgement of the trade mark application. It is as at this date that the opposition must be assessed. Despite this, it remains common for parties to file evidence which only (or largely) relates to circumstances after the priority date.[1] Such evidence is often easily attacked as being entirely irrelevant or of very low weight.

In some cases, however, post-priority date evidence can be relevant.[2]

In Conde Nast Publications Ltd v Taylor,[3] Burchett J said:

[I]t is a commonplace of the law of evidence that later events may cast light upon the true position at an earlier date. … [I]t is cold common sense to see actual events as capable of illuminating the probabilities already inherent in the situation from which they arose. That evidence of events since the application date is material and admissible was accepted by Gummow J in Johnson & Johnson v Kalnin [1993] FCA 210; (1993) 26 IPR 435 at 439. As his Honour pointed out, the onus must be borne in mind, and also the difficulty in obtaining evidence of confusion or deception.

Thus, post-priority date evidence may be relevant insofar as it casts light on events as at the priority date.[4] That will not allow a party to rely on evidence of use of a trade mark after the priority date to establish proprietorship, reputation or likelihood of confusion as at the priority date where there was no actual use before the priority date. But evidence of matters after the priority date may be relevant to support an inference of relevant trade mark use and/or a likelihood of confusion existing as at the priority date.

Another limited exception is that evidence of trade mark use after the priority date may be relevant to the discretionary factors to be determined in respect of honest concurrent use under s 44(3).[5]

Evidence from after the relevant date should be used with caution but not necessarily avoided. It will sometimes provide the best evidence available of relevant use or confusion in the market.

[1] For a recent case where no weight was given to evidence from after the relevant date, see Roger Maier v Asos Plc [2014] ATMO 7.

[2] For a recent discussion of some of these authorities, see The H.D. Lee Company Inc v Tracey Taylor [2013] ATMO 49 from [34].

[3] (1998) 41 IPR 505 at 509.

[4] Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505 per Burchett J at 509; see also Johnson & Johnson v Kalnin (1993) 26 IPR 435 per Gummow J at 439.

[5] PB Foods v Malanda Dairyfoods Ltd (1999) 47 IPR 47 per Carr J at [70]-[72].