The admissibility of archived webpage printouts from the “Wayback Machine” website was recently tested by the Federal Court of Australia, providing a useful reminder for businesses to be diligent in keeping internal records of their websites to support their intellectual property rights, rather than relying on external archives.
In Dyno Nobel Inc v Orica Explosives Technology Pty Ltd (No 2)  FCA 1552, Justice Burley provided clear insight into the judicial treatment of the Wayback Machine website and the application of the hearsay rule. While such archives are very convenient sources of evidence as to the state of a website at a particular point in time, this decision highlights the dangers of relying on after-the-fact, external records.
Dyno Nobel Inc (Dyno) commenced proceedings against Orica Explosives Technology Pty Ltd (Orica), seeking to revoke Orica’s Australian patent entitled, “Method of blasting multiple layers or levels of rock”.1 Although the application was ultimately settled out of court,2 the main point in contention was that Dyno had sought to rely on evidence of archived webpages obtained from the Wayback Machine to establish aspects of common general knowledge in November 2013.3 This was opposed by Orica on the basis that the webpage print-offs were inadmissible hearsay and did not qualify for any exception under the Evidence Act 1995 (Cth) (Evidence Act).4
What is the Wayback Machine?
“It operates to capture and date the ephemera of the internet.”5
The Wayback Machine is a free service provided by the Internet Archive, a not-for-profit organisation, that gives access to a searchable digital library of internet content going back to 1996.6 The library includes copies of website files, showing the historical version of the webpage as it existed on specified dates in the past.7
The use of the Wayback Machine and similar internet research tools can be very useful in intellectual property matters to establish, for example:
- The date of first use of a trade mark;
- That use of a trade mark has been continuous over several years;
- The content history of a website in domain name complaints or litigation; and
- To ascertain common general knowledge at a point in time when assessing patents.
The business record exception
IP Australia is not bound by the rules of evidence and has routinely considered evidence from the Wayback Machine to confirm the existence and appearance of a web page at the date indicated, on the balance of probabilities.8
However, once proceedings are filed with, or decisions appealed to, the Federal Court then the rules of evidence apply and such records may be deemed inadmissible under the hearsay rule, unless an exception applies.
One such exception is the ‘business record’ exception set out in section 69 of the Evidence Act. This exception provides that the hearsay rule does not apply to a previous representation recorded in a document that forms part of the records kept by an organisation in the course of a business.
Orica submitted that the Wayback materials were not admissible as business records because they were neither Orica’s nor Dyno’s documents.9 Rather, the printouts were output of the Internet Archive’s business, namely, the business of collecting and storing records from the internet and making them publicly available.10 Further, Orica submitted that website publications “extolling the virtues of a business” could not be business records (here, the extracts included promotional material).11
The Court agreed with Orica and found section 69 was not satisfied because the documents did not “fall within the concept of an internal record, kept in an organised form…. recording the business activities themselves”.12 This was in line with previous cases that ruled historic webpages generated through the Wayback Machine were inadmissible because the Court could not be satisfied that the archived webpages were business records under section 69.13
Waiving the hearsay rule
“However, s 69 is not the end of the matter…”14
Section 190 of the Evidence Act provides for the rules of evidence to be waived in certain circumstances. Specifically, the Court has discretion to disregard the hearsay rule where the evidence is not in dispute or its application would cause or involve unnecessary expense or delay. The Court may also take into account the importance of the evidence to the proceeding and its probative value.
Here, Dyno took a novel approach towards arguing admissibility of Wayback Machine records under section 190. Dyno encouraged Justice Burley to consider that the website in question was operated on behalf of Orica and Orica itself had been unable to find records of the website.15 His Honour was reluctant to disallow the materials and reward Orica for keeping inadequate records on the basis of a technicality.16 Further, Orica had not contested the accuracy of the material and other materials produced were consistent with the printouts. Accordingly, his Honour accepted the reliability of the Wayback materials.17
Altogether, these exceptional circumstances permitted the Court to dispense with the rules of evidence in this particular case. However, the permission granted by His Honour was also subject to a limitation that the materials would only be used to prove the availability of the website and of the contents on particular web pages, at particular points in time. The use did not extend to proving the truth of any fact represented on the web pages.18
Notwithstanding Dyno’s success in this particular case, there is no guarantee that evidence from the Wayback Machine will be admissible and accepted as reliable in Court.19
Although section 190 provides some relief to the application of the hearsay rule, granting a waiver is a discretionary matter for the Court. It is only where there is no dispute as to the correctness of the materials or where admission would prevent unnecessary expense or delay that the Court may consider waiving the hearsay rule.
To avoid such arguments, businesses should keep their own up-to-date, internal records of their websites. This will ensure reliable evidence of the content of those websites in intellectual property disputes.
This article was written by Jason O’Connell, Partner, Gina Tresidder, Special Counsel and Jane Ku, Law Graduate.
1. Dyno Nobel Inc v Orica Explosives Technology Pty Ltd (No 2)  FCA 1552, .
2. Commonwealth Courts Portal, List of Orders https://www.comcourts.gov.au/file/FEDERAL/P/NSD1500/2017/order_list at 2 October 2019.
3. Dyno v Orica, .
4. Ibid, .
5. Ibid, .
6. Internet Archive, About the Internet Archive https://archive.org/about/ at 2 October 2019.
7. Ibid, Dyno v Orica, .
8. IP Australia, Trade Marks Examiners Manual of Practice and Procedure (2019) [23.3.5], [18.104.22.168], http://manuals.ipaustralia.gov.au/trademarks/trade_marks_examiners_manual.htm at 2 October 2019; IP Australia, Australian Patent Office Manual of Practice and Procedure (2019) [3.5.2], http://manuals.ipaustralia.gov.au/patents/Patent_Examiners_Manual.htm at 2 October 2019.
9. Dyno v Orica, .
10. Ibid, , .
11. Ibid, .
12. Ibid .
13. For example, Shape Shopfitters Pty Ltd v Shape Australia Pty Ltd (No 2)  FCA 474 at ; Voxson Pty Ltd v Telstra Corporation Limited (No. 10) (2018) 134 IPR 99 at - and Rodney Jane Racing Pty Ltd v Monster Energy Company  FCA 923 at .
14. Ibid .
15. Ibid, .
18. Ibid, .
19. For example, see Harcourts WA Pty Ltd v Roy Weston Nominees Pty Ltd (No 4)  FCA 138 at .