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Web archives: to what extent is online evidence admissible in intellectual property infringement matters?

By Vanessa Bouchara - Expertise Blog

When a rights owner becomes aware of an intellectual property rights infringement on the internet, whether this be in the form of an infringement of their trademark, authors’ rights, design rights or any other violation, the question of proof and evidence is essential.

Evidence gathered before bringing the action can turn out to be insufficient.

This is why the question might be asked concerning the extent to which it is possible to prove an infringement of rights on the internet using evidence gathered after the infringement occurred by using the Web Archives website. This website allows users to consult website content as it was at a particular moment in time.

As such, this website lets you know if a site has been used continuously and what was on the website when it was ‘vacuumed up’ by the archives.

The first decision which made reference to this website was delivered by the Court of Grand Instance in Paris in 2004.

The Court considered that the public use of a domain name which anticipated a subsequent trademark could be proved by the search results on the website (TGI Paris, 3rd Chamber, 1st Section, 30th June 2004).

Thus, it is clear that the court’s position regarding the admissibility of this form of evidence has evolved.

Between 2010 and 2014, a number of decisions were given both from the Court of Appeal in Paris (Paris Court of Appeal Pôle 5, 2nd Chamber – case from 2nd July 2010) and the Court of Grand Instance. Both courts held that Web Archives was not a weak form of evidence.

A finding was made during the proceedings about the website which determined the existence of pages which infringed on the plaintiff’s rights.

At the same time, the Court considered ‘that the dates indicated on the results page relating to archived pages from the website M6 Boutique from 1996 to 2009 on the website The Wayback Machine at the bottom of the results page only establishes, with any certainty, that on each of these dates it was only the corresponding screen that was printed.’ The Court of Appeal held that the determination had been made from ‘an archiving service used by a third party to the case who is a private person without legal standing whose operating conditions are to be disregarded’ and ‘that the extract from the questions that he was asked regarding the function shows that this search tool was not made for a legal use’

In judgments from 27th May 2011, 9th March 2012, 18th September 2012 and 13th September 2013, the Court of Grand Instance upheld the decision taken and adopted the reasoning of the Court of Appeal. For the court, and as ascertained by a court-ordered bailiff, the extracts from the Web Archives site lacked any sort of probative force in evidence.

Thus, this website was not held to have constituted an admissible form of evidence insofar as demonstrating a serious and continuous use of a trademark in the context of an action for trademark disuse. Further, the website could not be used to justify the previous use of a design in the context of an action for establishing authors’ rights.

The Courts appear to be somewhat stuck on which legal position to take even though this website is a reliable site used by a number of professionals to determine content of sites at given times in the past.

At the same time, the WIPO has affirmed the validity of information obtained from online archiving services such as Web Archives (OMPI, n° D2011-0421).

On 19th May 2014, the Paris Court of Appeal (Pôle 5, 1st Chamber) referred to in making a comparison of other websites.

In May 2014, the Board of Appeal at the EPO (European Patent Office) rendered a particularly interesting decision which affirmed that proof obtained from Web Archives was valid.

The Board overturned a decision taken by the EOP which considered that in principle internet archives are not reliable sources of evidence.

For the Board, except in some special circumstances which cast some doubt on the content of the archives on, the fact that a document has been archived creates a strong presumption that the document is or has at some point been accessible to the public. For the Board, even though this source can sometimes be incomplete, it does not affect the credibility of the information available.

The Board of Appeal explained how online archives work and made clear that it is a private and not-for-profit initiative available to the public at large for accessing previous content on the internet, and that since its creation in 1996 it has been very popular and has a good reputation.

Consequently, more is required from the party contesting the admissibility of the evidence than simply stating that online archives are unreliable. This in itself is not enough to establish dubiety as to the date of public access of an archived document.

While regulating the admissibility of evidence in court is important, it is also essential to use up to date means and techniques of evidence so that infringements are correctly addressed by the courts.

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