For practitioners and intellectual property office officials, the Internet Archive (WayBack Machine) is a popular source of historical evidence of the state of a website or the current information on a website. The rules established by the Evidence Act 1995 do not apply to IP Australia, so it has been possible to adduce evidence from the WayBack Machine during pre- and post-registration proceedings relating to trade marks and patents matters before IP Australia.
In contrast, the use of WayBack Machine evidence before the Court is fraught since archived pages may be regarded as hearsay and the admissibility of such evidence is governed by the Evidence Act 1995.
The decision by Murphy J in Pinnacle Runway Pty Ltd v Triangl Limited  FCA 1662 further defines the admissibility of WayBack Machine evidence in Federal Court of Australia proceedings. Pinnacle Runway Pty Ltd is the owner of the trade mark DELPHINE in class 25 for clothing, headwear, and swimwear. Triangl sold in Australia a bikini style in three different floral designs under the TRIANGL Trade Mark using the name DELPHINE, but denied using DELPHINE “as a trade mark”.
Pinnacle sued Triangl for trade mark infringement whilst Triangl cross-claimed that the DELPHINE trade mark should be cancelled since Pinnacle was not the first trader to use DELPHINE in the course of trade in Australia in relation to the goods for which the mark is registered. Both parties failed to establish their case.
The written judgment opens with “These are ill–advised proceedings in respect of alleged trade mark infringement and cancellation of a trade mark, and there is no clear winner.” At paragraph 2, Murphy J went on to state that “Even if Pinnacle had been successful in its claim, its damages entitlements were not worth the powder and shot”, reflecting that Triangl’s revenue through alleged infringing use was less than $40 000, and Pinnacle was not able to show any loss of sales.
In the backdrop of these dramatic judicial statements, this article only focuses on the admissibility of WayBack Machine evidence adduced by Triangl in support of the contention that for the relevant period, consumers in Australia were accustomed to seeing women’s names used as style names in relation to women’s fashion, including women’s swimwear. As such, according to Triangl, consumers were used to this practice and that its use of the name DELPHINE was unlikely to be perceived by consumers as distinguishing Triangl’s goods from the goods of other traders.
The contended evidence were online searches conducted on the WayBack Machine in July and August 2018 to search for historic versions of the websites of a range of women swimwear brands and fashion brands over the period from 2012 until June 2016. The evidence was in the form of screenshots of the searches. Pinnacle argued that such evidence is hearsay and thus not admissible pursuant to s59 of the Evidence Act 1995. Moreover, Pinnacle argued that the screenshots of webpages are not “business records” and thus fall outside of the business records exception for hearsay evidence under the Evidence Act.
Murphy J adopted the view that screenshots of webpages showing content such as product name, description, and prices are business records. WayBack Machine evidence has been considered inadmissible hearsay by the Federal Court in a number of other cases. Hence, his Honour’s reasoning as to why the WayBack Machine evidence is not hearsay bears some note.
According to his Honour, the contended evidence is only hearsay under s 59 if the archiving and retrieval process involved human input and… “That is, that a person or persons was involved in copying and uploading the page to the Internet Archive database or later retrieving it for production.” Accordingly, machine-generated material is not hearsay. By this reasoning, if the WayBack Machine archive is automatically populated by a software program that captures the relevant content and produces archived pages. As such, the contented screenshots are not representations made by a person and are thus not hearsay.
The Court heard evidence from Mr Butler, office manager of the Internet Archive (owners of the WayBack Machine) of how “crawlers” compile the WayBack Machine archive. A crawler is a software program that runs continuously to perform this archiving function, without human intervention. Despite Pinnacle’s attempt to discredit the suitability of Mr Butler’s technical expertise, or lack thereof as a computer programmer, Murphy J accepted that Mr Butler evidence on how crawlers work to autopopulate the WayBack Machine without human input to be credible based on Mr Butler’s employment activities. In the Court’s view, previous decisions regarding WayBack Machine evidence were not made with the benefit of understanding how the archive actually works and thus could be distinguished on this point.
Murphy J held that the screenshots Triangl sought to adduce were not inadmissible hearsay. Although this finding perhaps did not have significant weight in the context of the broader outcome of the case, it serves as a valuable reminder that archived material from the internet can be value at trial.