A way forward for Wayback Machine evidence

The Wayback Machine,[1] a digital archive that stores historical copies of websites at specific points in time, is the scourge of former keyboard warriors wishing they could scrub the internet of cringe-inducing Myspace profiles or angsty blog posts.

For IP practitioners, however, the Wayback Machine has long been a saving grace of the profession, providing that crucial piece of trade mark use or common general knowledge evidence.

The Trade Marks Office Manual of Practice and Procedure puts it best:[2]

Content on the internet is constantly changing. Consequently, web pages can have very short lifespans. This may pose difficulties for applicants where they are seeking to provide evidence of use of their trade mark on the internet from several months, or in some instances years, prior to the time they attempt to assemble their evidence.

 In this situation, applicants may provide documentation from a web archiving service. Documentation of this nature typically gives a snapshot of what a particular web page looked like on a certain date. Where an applicant provides evidence of this variety (in the usual declaratory form) examiners should consider this prima facie evidence of the existence and appearance of the web page at the date indicated.

The Australian Patent Office Manual of Practice and Procedure also states that since ‘the Commissioner is not bound by the Rules of Evidence, evidence from the Wayback Machine can be considered on the balance of probabilities:

… patent offices around the world do rely on internet documents as relevant prior art for the purposes of determining novelty and inventive step and the Wayback Machine is one of the ways to establish the publication date of an internet document. The Internet Archive may not be entirely reliable in respect to dates of availability or content on a particular date, but absent any reason or evidence of error then the dates and content on Wayback Machine should be accepted on the balance of probabilities.”  [Sheng-Ping Fang [2011] APO 102 at 95]’ [3]

Despite its recognised usefulness, the use of Wayback Machine evidence has largely been confined to the prosecution stage.  Australian Courts have regularly found such evidence to be inadmissible on the grounds of hearsay, refusing to find any available exceptions.

However, two decisions handed down by the Federal Court in recent weeks indicate a loosening of the Court’s treatment of Wayback Machine evidence – opening exciting new possibilities for IP practitioners.

Dyno v Orica:  Dispensing with the rules of evidence

Our first case, Dyno Nobel Inc v Orica Explosives Technology Pty Ltd (No 2) [2019] FCA 1552 involves an application by Dyno Nobel Inc (Dyno) for revocation of a patent held by Orica Explosives Technology Pty Ltd (Orica) relating to a method of blasting multiple layers or levels of rock.

Dyno sought to adduce print-outs from the Wayback Machine of a website operated on behalf of Orica to prove features of the common general knowledge as at the priority date of the patent in dispute.

Orica objected to the admission of this evidence on the basis that the materials were hearsay documents that did not qualify for any exception in the Evidence Act 1995 (Cth) (Evidence Act).  In particular, Orica submitted that these materials did not fall within the business records exception to the hearsay rule (s 69 of the Evidence Act) which applies to previous representations made or recorded in a document that forms part of the records belonging to or kept by a person, body or organisation in the course of, or for the purposes of, a business.

Justice Burley accepted that the materials comprised hearsay representations of the content of the website at the particular point in time when the materials were archived.  His Honour also held that the materials were not business records because the content of the Wayback Machine archive constitutes the output of the Internet Archive, the not-for-profit that operates the Wayback Machine, whose “business” is to collect and maintain a digital archive.  That is, printouts of websites taken from the Wayback Machine did “not fall within the concept of an internal record, kept in an organised form accessible in the usual course of business, actually recording the business activities themselves which does not include the product of the business itself”.[4]

However, this was not the end of the matter.  Exercising the discretion conferred on his Honour under s 190 of the Evidence Act to dispense with rules of evidence, Burley J ordered that the hearsay rule be waived and the Wayback materials be admitted.

Justice Burley was compelled by a number of factors, including:

  • the probative value of the evidence: His Honour considered that the Wayback materials “are likely to be a reliable indication of the content of the … website at different points in time”.[5] This was supported by consistencies between the content of the website and expert evidence regarding common general knowledge by the relevant priority date;
  • there was no genuine dispute as to the accuracy of the contents of the Wayback materials: Orica did not raise any basis on which to question the accuracy of the Wayback materials, had failed to adequately maintain its own records to verify the content of the materials, and, given that the website was operated on Orica’s behalf, the Court would have expected any inaccuracies to be raised by Orica if they existed; and
  • public interest: in ensuring that relevant and probative evidence is before the Court, namely where a 20-year patent term is being defended.

In the end, Justice Burley allowed the Wayback materials into evidence subject to a limitation under s 136 of the Evidence Act that the use of the evidence was to prove the availability of Orica’s website (and of the contents of the particular pages) on particular dates and did not extend to prove the truth of any fact referred to in the particular pages.

Pinnacle v Triangl: Software aren’t people too

In Pinnacle Runway Pty Ltd v Triangl Limited [2019] FCA 1662, Pinnacle Runway Pty Ltd (Pinnacle) alleged that Triangl Group Limited (Triangl) infringed its registered trade mark DELPHINE in relation to the sale of swimwear.

Triangl admitted that over a period of six weeks, it marketed and sold in Australia a bikini style in three different floral designs under its TRIANGL trade mark using the name DELPHINE, but denied using DELPHINE “as a trade mark”.  Instead, Triangl argued that DELPHINE was used as a “style name” so as to assist consumers to differentiate one of its many bikini styles from its other styles.

To support its argument, Triangl put on evidence to demonstrate that there exists a widespread practice in the women’s fashion industry in Australia of using style names, in particular the names of women, and that consumers are familiar with this practice such that they were unlikely to perceive Triangl’s use of DELPHINE as distinguishing its goods from the goods of other traders.  As part of this, Triangl sought to rely on screenshots of websites of a range of women’s swimwear and clothing brands showing that on various dates over the relevant period these brands used women’s names in relation to their swimwear and other clothing styles.

First, Justice Murphy found that the screenshots of the webpages, each containing a representation by the relevant fashion house that they advertised women’s fashion apparel and swimwear for sale under particular style names and at specified prices, constituted inadmissible hearsay.  That is, Triangl sought to use the screenshots to prove the truth of their contents (in regards to the use of womens names as style names that appeared on those screenshots).

However, by distinguishing the part of a website which offers a particular product for sale under a product name, with a product description and at a specific price from “a flyer or a media advertisement or a website publication extolling the virtues of the business”, His Honour found that the contents of the screenshots formed a business record.   That is, it is appropriate to treat the content of a webpage that sets out the product name, description and price as a business record because it “sets out the essential terms of the proposed transaction” and “it is hard to see why a business website would offer a product for sale under a product description and name and at a specified price unless that was actually the position.  Such material is likely to be reliable.”

A complicating factor was, however, that Triangl also sought to adduce the screenshots as evidence that those pages were in fact from the dates on the screenshot.  That is, each screenshot purported to be a digital copy of a page represented by the Internet Archive to have existed on the website of the relevant fashion house or online retailer on the date specified.

His Honour considered that the hearsay rule as set out in the Evidence Act is concerned with representations “made by a person”.  Accordingly, the representation by the Internet Archive – that the Wayback Machine copied the relevant webpage into its archive and recorded the date on which it did so, and that the page retrieved from its archive is the same page which existed on that date – is only hearsay if its archiving and retrieval process involved human input.  That is, a person or persons was involved in copying and uploading the page to the Internet Archive database or later retrieving it for production.

Murphy J distinguished Pinnacle from the previous case law in which the Court held that copies of historical versions of webpages obtained by use of the Wayback Machine constitute inadmissible hearsay on the basis that, in each of those cases, there was no admissible evidence before the Court as to the operation of the Wayback Machine (and that in Dyno, Burley J had not been asked to consider the question).

In this case, Triangl relied on evidence from the office manager at the Internet Archive to establish that the archiving and retrieval of webpages by the Wayback Machine does not involve human input.  Instead, its data is compiled using software programs known as “crawlers” that surf the internet and automatically store copies of website files, preserving them as they exist at the point of time of capture.

Accordingly, Murphy J diverged from prior case law to find that the Wayback evidence did not constitute hearsay and allowed Triangl to rely on the screenshots to prove that a webpage existed on the particular date recorded by the Internet Archive.

The WayForward

These decisions indicate an increasing willingness of the Court to accept Wayback Machine evidence in IP enforcement proceedings.  Justice Murphy’s decision in Pinnacle provides a compelling and practical basis upon which evidence taken from the Wayback Machine will no longer be considered inadmissible hearsay or, at least, to fall within the business records exception in some circumstances.

Justice Murphy’s decision is currently under appeal, so it remains to be seen whether his Honour’s break from the prior case law will be overturned.  Nevertheless, the judgment in Dyno provides an alternative avenue for parties seeking to rely on Wayback Machine evidence and also provides a persuasive consideration of the reliability of such evidence where there is no countervailing evidence to suggest otherwise.

Going forward:

  • reliance on Wayback Machine evidence should be accompanied by credible evidence of how it functions;
  • any attempt to challenge the admissibility of Wayback Machine evidence should include credible evidence (namely, internal records) going to its inaccuracy; and
  • parties should consider whether other evidence supports (or contradicts) the representations made in any Wayback Machine screenshots and whether there is anything about the archived webpage and its contents that falls within the scope of the business record exception (for example, where the essential terms of the proposed transaction appear on the relevant extracts).

IP Whiteboard will be sure to keep you posted on any developments.

[1] http://web.archive.org/

[2] http://manuals.ipaustralia.gov.au/trademarks/Part_23_-_Evidence/23.3_Evidence_of_use_-_general_requirements.htm

[3] http://manuals.ipaustralia.gov.au/patents/opposition/evidence/3.5.2_Admissibility_of_Evidence.htm

[4] at [18].

[5] at [21].