Painted into a corner when relying on Internet search results as evidence
Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd  FCA 396
(26 March 2020)
Trade Marks – admissibility of screenshots of webpages and searches of online databases
During trial of trade mark infringement and validity dispute, Justice O’Bryan made rulings as to admissibility of evidence that are set out separately in this decision: Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd  FCA 396. The evidence in question was adduced by the respondents and appeared primarily directed to whether the Applicant’s trade marks for THE CORNER HOTEL, THE CORNER and CORNER in respect of “live music performances and ticket booking services for such performances” were valid. In particular, His Honour considered the admissibility of:
(a) screenshots of webpages for various hotel businesses trading under names that included the word “corner”, including The Corner Hotel Alexandra, Victoria; The Corner Pub in Liverpool, NSW; and the Corner Hotel in Ballarat, Victoria;
(b) an online search of the St Kilda Historical Society which showed that there was a “Corner Hotel” on the corner of Fitzroy and Barkly Streets in St Kilda which operated from 1864 until 1967; and
(c) an online search of the Victorian Heritage Database (an electronic database of Victoria’s significant heritage places and objects published by the Heritage Council of Victoria) for hotels or pubs using the word “corner” in their name, which showed there was a “Corner Hotel” that was located on the corner of Barker and Lyttleton Streets in Castlemaine, Victoria and was built in June 1869.
The facts sought to be established by that evidence was that there were a number of hotels or pubs in Australia that have traded under a name that included the word “corner” and that a number of those hotels or pubs have offered live music performances at the premises.
Each of those exhibits was inadmissible hearsay pursuant to s.59 of the Evidence Act 1995 (Cth), unless they fell within an exception or the hearsay rule was waived pursuant to s 190 of the Evidence Act.
While there is no invariable rule that a webpage cannot constitute a business record, the screenshots of the websites in issue here were not business records because they were “solely descriptive of the businesses concerned” rather than, for example, “documents by which a business offers a product for sale, which typically includes a description of the product and the price and possibly other terms and conditions of the offer”: Rodney Jane Racing Pty Ltd v Monster Energy Company  FCA 923 at . His Honour did not address whether the online searches were business records, presumably because that was not in issue. We note that with an online search one might query, however, of whose “business” that would be a “record”.
However, His Honour applied s 190(3) of the Evidence Act in favour of the respondents, which provides that the Court may order that the hearsay rule does not apply if the matter to which the evidence relates is not genuinely in dispute or the application of that rule would cause or involve unnecessary expense or delay. The matters the Court may take into account in exercising its discretion to waive the hearsay rule are set out in s 190(4), and are: “(a) the importance of the evidence in the proceeding; (b) the nature of the cause of action or defence and the nature of the subject matter of the proceeding; (c) the probative value of the evidence; and (d) the powers of the Court (if any) to adjourn the hearing, to make another order or to give a direction in relation to the evidence.”
His Honour concluded that neither of the facts sought to be established by exhibits (as described above) was genuinely in dispute and that adducing admissible evidence to establish those facts would involve unnecessary expense or delay. As to the latter, in:
the case of businesses that are currently operating, it would require the respondents to visit the premises in order to obtain direct evidence of their operations. The respondents have adduced evidence of that kind, but to replicate it across all possible venues would, in my view, involve unnecessary expense. In the case of businesses that have closed, it would require the respondents to obtain evidence from the authors of the historical records concerning such premises. Again, in my view, such a step would involve unnecessary expense. I have reached that conclusion in light of the facts that the evidence is relatively uncontroversial; the facts sought to be proved by the evidence are relatively confined, as set out above; and those facts are not determinative of the issues in dispute between the parties. [emphasis added]
The last point is somewhat interesting. It would appear that His Honour might have excluded the evidence if the facts sought to be proven would have been determinative of an issue in dispute, which indicates how the application of s 190 may be of limited practical utility in most cases.
We further note that the parties did not appear to engage with s 64 of the Evidence Act which provides that the hearsay rule “does not apply” to “a document so far as it contains” a previous representation regarding an asserted fact in a civil proceeding “if it would cause undue expense or undue delay, or would not be reasonably practicable, to call the person who made the representation to give evidence”. That provision does not on its face contemplate the application of a discretion by the Court, though what constitutes “undue” likely brings in the discretionary considerations found in s 190. Nevertheless, the requirement for undue delay or expense in s 64 would apparently have been met in this case and so one might wonder why both s 64 and s 190 were not relied upon.
As a final aside, O’Bryan J observed that, in relation to the screenshots of the websites, the parties did not make submissions about the possible application of the provisions of Part 4.3 of the Evidence Act. Part 4.3 covers a wide range of provisions that facilitate the proof of certain matters. In relation to the searches of the Victorian Heritage Database, perhaps his Honour was referring to the provision concerning matters of official record (ss 153 to 159).