Mortimer J has ruled that print outs of third party websites are inadmissible as hearsay and, if not, excluded under s 135 of the Evidence Act as unduly prejudicial.
Shape Shopfitters is suing Shape Australia for infringement of several registered trade marks which, it says, include SHAPE as the essential feature and the usual passing off-type actions. Both are in the commercial construction business. Shape Australia used to be called ISIS Group Australia, but changed its name in October 2015, as her Honour said “for reasons that are immediately obvious.”
Shape Shopfitters is contending that the use of “Shape” in Shape Australia’s name is likely to lead people to think that Shape Shopfitters is the “shopfitting” arm of Shape Australia, which it is not.
As part of its defence Shape Australia sought to lead evidence of ASIC and Australian Business Register records of other companies and businesses with the word SHAPE in their name. Shape Australia also sought to introduce print outs of the websites of various businesses resulting from Google searches such as “shape building”. Some, but not all, of the print outs were from the Wayback Machine. The print outs purported to be of businesses called Shape Consulting, Shape Builders Pty Ltd, Shape Joinery & Design Pty Ltd, Shape Fitouts Pty Ltd and Shape Finance (Aust) Pty Ltd. You will immediately appreciate that Shape Australia was hoping to show that “shape” itself was not distinctive or to rely on the well-known proposition from the Hornsby Building Information case.
Mortimer J noted that no objection was taken to the ASIC or Australian Business Register print out – presumably, because they were official records.
However, the print outs of the websites of the businesses themselves were hearsay. They were being advanced to show that there were other businesses out there claiming to have and use the names appearing in the print outs. At , her Honour ruled:
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 (including the archived material to which Mr Henry deposes in  of his affidavit) 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.
Even if the print outs were not hearsay, Mortimer J would have excluded them under s 135 if the Evidence Act on the basis that their probative value was substantially outweighed by the danger of prejudice to Shape Shopfitting.
the evidence … constitutes no more than a snapshot of what was available through a series of internet searches on a particular date, without any context being available to be tested about the nature of the businesses these searches have turned up. The probative value of such searches is limited on any view. The applicant’s case is a very specific one about what participants in the commercial construction industry may or may not be led to believe concerning the relationship between the applicant and the respondent, and whether the applicant might be seen as no more than a “specialist shop fitting arm” of the respondent. To have evidence in the nature of single date extracts of internet searches showing businesses using the word “shape”, without calling evidence from witnesses who operate or control those businesses, and allowing the applicant to test the similarities or differences between those businesses and its own, between the customer base(s) of those business and its own, and in turn between those businesses and the respondents, is in my opinion to create a danger of unfair prejudice to the applicant. Snapshots of internet searches on particular dates, all of which are between just under and just over a year after the respondent adopted the name “SHAPE Australia” contribute little by way of proof as to what participants in the commercial construction industry were likely to believe about the commercial relationship between the applicant and the respondent since 26 October 2015, but it is not the kind of evidence the applicant can test as it should be able to.
What Shape Australia should have done was get affidavits, or subpoena, from (1) witnesses from the companies it wished to prove existed and (2) consumers who might be searching for the relevant services.
Now, depending on which side of the case you find yourself, you will be cheering or in tears. But, at the very least one might wonder if that correct approach is really conducting litigation “as quickly, inexpensively and efficiently as possible”? It will be very interesting to see how her Honour deals with Shape Australia’s substantive arguments whether it’s name is too similar to Shape Shopfittings’? Meanwhile, the Registrar can treat the Wayback Machine as valid evidence.
Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No 2)  FCA 474
- In which I include the usual misleading or deceptive conduct actions under the Australian Consumer Law too. ?
- It is not clear whether the search was just of the two words or the two words in quotation marks. ?
- At . ?
- At . ?
- Noting that at least 2 prior decisions had ruled internet archive materials inadmissible: Athens v Randwick City Council  NSWCA 317 and E & J Gallo Winery v Lion Nathan Australia Pty Limited  FCA 93. ?
- I.e., the Wayback Machine print outs. ?