Isn't a screenshot enough? Compiling evidence in online trade mark infringement proceedings

In the digital age, material posted on the Internet can be removed within seconds of it first appearing. Where that material involves the unauthorised use of trade marks, it can be difficult to compile evidence in support of a claim - but not impossible. There are some basic steps you should take when becoming aware of a potential infringement.

Types of evidence that could prove online trade mark infringement

When taking action against a party for online trade mark infringement, a person may seek to put into evidence different types of material to support their claim, including, for example:

• print-outs of the material showing the page's URL, and date the material was accessed;
• screenshots of the page;
• archived copies of the page, often accessed via the Wayback Machine, an online source that stores imaged copies of webpages at various dates and times;
• statements from individuals that have accessed the page, with a clear description of the material that they viewed; and
• a record of who owns the page's URL, and its source code at the particular date in question.

Weight given to that evidence

A common misconception is that all evidence is good evidence. This is unfortunately not the case. The Court treats evidence differently, depending on things like:

• the time it was obtained;
• the source of the material; and
• whether the probative value of the evidence is outweighed by the potential prejudice suffered by the other party.

As to this last point, the Court has the discretion to exclude evidence where the prejudice outweighs the probative value obtained, or may just give it limited weight. The weight will also often depend on what that evidence is seeking to prove. For example:

• print-outs of a page tend to prove the location of the material and the date on which that material was shown on the page;
• although screenshots can be useful, they may be categorised as hearsay. The screenshot is essentially another document and, presuming the taker of the screenshot is not the author of page, cannot be relied upon to prove things like the contents of the web page, the URL address, etc.;
• archived pages, while similar to print outs in theory, can be difficult to verify. We explore this further below; and
• statements from industry participants or consumers as to their perception of the material is often crucial to proving things like whether there was actual confusion created by the material.

The question as to whether archived pages from sources like the Wayback Machine should be entered as evidence is an interesting one. Of particular concern is that no one really seems to know who maintains the records kept within such archives, and whether it is in fact accurate as to what appeared at the particular URL on the date in question. It has, in the past, been described by the Australian Trademarks Office as "inherently unreliable", so it should not be relied upon solely as proof as to what existed on the page in question on that particular date.

Case study: Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd

In the recent decision of Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No 2) [2017] FCA 474, Justice Mortimer ruled that printouts of certain third-party websites were inadmissible on the basis that:

• they were hearsay; and
• they were unfairly prejudicial, which outweighed the probative value of the material to proving any fact in issue.

Both parties were commercial construction companies. Shape Shopfitters Pty Ltd had practised under that name since July 2012, while Shape Australia Pty Ltd changed its name from ISIS Group Australia in October 2015 (for reasons that Justice Mortimer described as "immediately obvious"). Shape Shopfitters thereafter commenced action for misleading and deceptive conduct, passing off and for alleged infringement of a number of registered trademarks (which included SHAPE as an essential feature of the marks).

In defending the allegations, a representative of Shape Australia exhibited to an affidavit, amongst other things, a series of:

• printouts of searches of ASIC and Australian Business Register records other entities with the word SHAPE in their name such as "Shape Project Management Pty Ltd”, “Shape Builders Pty Ltd”, “Shape Joinery & Design Pty Ltd”, “Shape Fitouts Pty Ltd”, and “Shape Finance (Aust) Pty Ltd”; and
• screenshots of archived Internet material that showed previous versions of pages, including a number of web pages that had been accessed through the Wayback Machine.

No objection was taken to the printouts of records obtained from ASIC or the Australian Business Register (presumably because those searches related to public records). However objection was taken to the Internet search evidence. Notably also, no evidence was led from consumers as to what they would have perceived from the material.

Shape Shopfitters argued the evidence had no probative value when it came to showing a proliferation in the relevant marketplace of the use of the word “shape” by other businesses at or around the same time as the alleged conduct of Shape Australia. All it demonstrated, said Shape Shopfitters, was that a particular words were used on a particular date on certain websites. It could not be used to prove what happened since Shape Australia changed its name, and therefore that evidence should be excluded. Shape Shopfitters also objected on the basis of hearsay in that the person producing the searches could not give evidence about the accuracy of what was recorded and shown.

In finding that the material was inadmissible, the Court noted that it was of limited probative value. The material in question contributed "little by proof as to what participants in the commercial construction industry were likely to believe". All it showed was that the representative in question accessed the material on particular dates, and took screenshots.

The Court also showed similar disregard for the material tendered from the Wayback Machine.

Key takeaways

Screenshots can be a useful source of material in the Trade Marks Office (where the rules of evidence do not apply) to show infringing conduct or trademark usage. However, great caution is required if it is sought to be relied on in court, because such evidence does not always go unchallenged and if objection is taken, there is a risk it will be excluded.

If a person seeks to tender a screenshot as evidence of the truth of a statement it contains, it will be excluded as inadmissible hearsay. However, if it is tendered to establish the fact that the relevant statement or representation was made, then it can be admissible as direct evidence. The use to which the evidence is to be put is therefore an important consideration.

In light of the above, the following points emerge for consideration:

• it is good practice to take a hard copy of the page immediately. A print-out is better evidence than a screenshot, as it will normally have the date and URL on the record and avoids reliance on archives for such evidence;
• the person that came across the infringing material should make a note of how it was accessed - whether through advertisement, search result or similar;
• the infringing pages should be monitored and recorded regularly (daily, or more frequently if necessary). This will provide clear evidence as to the period of use;
• evidence should be obtained (by affidavits or subpoena) from the individuals responsible for operating the relevant webpage that gave the results in question (particularly if it is a search engine site); and
• serious consideration should be given to obtaining statements from consumers to establish reputation and any confusion in the marketplace arising from the complained of conduct – for example, evidence from consumers who undertook searches for the relevant services of what they observed and believed after reviewing a particular website or other publication.