Posts Tagged ‘Australia’

E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 93

May 21, 2017

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.[^1] 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”.[^2] 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.[^3]

Mortimer J noted that no objection was taken to the ASIC or Australian Business Register print out – presumably, because they were official records.[^4]

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 [24], her Honour ruled:[^5]

>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 [24] of his affidavit)[^6] 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 that basis that their probationers 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’?

[^1]: In which I include the usual misleading or deceptive conduct actions under the Australian Consumer Law too.
[^2]: It is not clear whether the search was just of the two words or the two words in quotation marks.
[^3]: At [25].
[^4]: At [13].
[^5]: Noting that at least 2 prior decisions had ruled internet archive materials inadmissible: Athens v Randwick City Council [2005] NSWCA 317 and E & J Gallo Winery v Lion Nathan Australia Pty Limited [2008] FCA 93.
[^6]: I.e., the Wayback Machine print outs.

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Third party website injunctions Down Under – second look

December 23, 2016

Third party website blocking Down Under – second look

Following up last week’s quick note, a closer look at Nicholas J’s decision in [Roadshow Films v Telstra][telstra] ordering the ISPs to block access to a number of offshore websites on the basis that they were primarily sites which infringe, or facilitate the infringement of, copyright.

There were two separate actions: one brought by Roadshow Films and the second brought by Foxtel. Both proceedings sought orders against three groups of ISPs: Telstra, Optus and TPG. Roadshow also sought orders against M2. Roadshow was seeking orders under [s115A][s115a] compelling the ISPs to block their subscribers’ access to a number of SolarMovie sites (which in the end resolved back solarmovie.ph). Foxtel was seeking the injunctions to block access to various Pirate Bay, Torrenz, TorrentHound and IsoHunt websites.

The ISPs did not contest the injunctions, but there were disputes about some of the terms.

#####The injunctions

Nicholas J therefore ordered that each of the ISPs take reasonable steps to disable access to “the Target Online Location”. By way of example, the Target Online Location in the Roadshow matter was defined as the online location or online locations known as “SolarMovie” that are or were accessible:
> (A) at the following URLs:
>
> (I) https://www.solarmovie.is
>
> (II) http://www.solarmovie.com;
>
> (III) http://www.solarmovie.eu; and
>
> (IV) https://www.solarmovie.ph;
>
> (together, the Target URLs);
>
> (B) at the following IP Addresses:
>
> (I) 185.47.10.11;
>
> (II) 205.204.80.87;
>
> (III) 188.92.78.142; and
>
> (IV) 68.71.61.168;
>
> (together, the Target IP Addresses);
>
> (C) at the following Domain Names:
>
> (I) solarmovie.is;
>
> (II) solarmovie.com;
>
> (III) solarmovie.eu; and
>
> (IV) solarmovie.ph.

Order 3 then provided that the ISP would be deemed to have taken reasonable steps if it took any one or more of the following steps:

> (a) DNS Blocking in respect of the Target Domain Names;[^f1]
>
> (b) IP Address blocking or re-routing in respect of the Target IP Addresses;[^f2]
>
> (c) URL blocking in respect of the Target URLs and the Target Domain Names;[^f3] or
>
> (d) any alternative technical means for disabling access to a Target Online Location as agreed in writing between the applicants and a respondent.

It seems from his Honour’s reasons that the ISPs expect to use DNS Blocking.

After the hearing in June, the particular Solarmovie sites went offline. Nicholas J was satisfied, however, that [s 115A][s115a] still permitted him to make orders blocking access. In contrast, his Honour did not consider there was sufficient evidence to block access to *some* of the Pirate Bay URLs which had always been inactive and associated with “CloudFlare”. Nichols J accepted that these websites gave rise to “suspicion”, but it was not strong enough to warrant ordering an injunction.

#####Landing pages

Nicholas J further ordered that the ISPs must redirect communciations to the “blocked” websites to a landing page. The ISP could choose to set up its own landing page but, if it did not wish to incur those costs, it was required to notify the relevant applicant. Once notified, the relevant applicant had to set up a landing page stating that access to the website had been disabled because the Court has found that it infringes, or facilitates the infringement of, copyright.

#####Whack-a-mole

Given the ease with which a website can be shifted to a new address, Roadshow and Foxtel sought orders that they add to the list of blocked addresses by letter to the ISPs.

Unlike the English courts, Nicholas J considered that an extension of the orders to other websites should require the involvement of the Court. Accordingly, his Honour ordered that applications to extend the orders to new iterations should be made to the Court on affidavit with proposed short minutes of order to extend the injunctions. This imposes some constraint on the use of such injunctions by enabling the ISPs to object.

#####How long

Nicholas J ordered that the scheme set in place should run for an initial period of 3 years. Six months before that expiry, however, the applicants can provide affidavit evidence to set out their case for an extension. The ISPs then have an opportunity to object or, if no objection is forthcoming, the Court may order an extension.

#####Costs

Roadshow and Foxtel did not seek costs. The respondents did.

Nicholas J considered that the costs of the ISPs incurred in setting up the technical requirements for the scheme to operate were simply costs of doing business and so to be borne by them. They were costs that would have to be incurred independently of these particular actions.

However, his Honour ordered that each ISP could charge $50 for each domain name included in the orders. His Honour considered that, as each ISP proposed to use DNS Blocking, a uniform figure should be used. $50 was a bit lower than some ISPs wanted and a bit higher than others.[^f4]

Nicholas J also ordered that the applicants pay the ISPs costs of the proceeding relating to the method for extending the regime to new iterations of a website and compliance costs.

[Roadshow Films Pty Ltd v Telstra Corporation Ltd][telstra] [2016] FCA 1503 (Nicholas J)

[^f1]: Nicholas J defined DNS Blocking as “a system by which any user of a respondent’s service who attempts to use a DNS resolver that is operated by or on behalf of that respondent to access a Target Online Location is prevented from receiving a DNS response other than a redirection as referred to in order 5.” Apparently, at [13], “ISPs can block access to specific online locations entered into the address bar of the Internet browser, by configuring their DNSS to either return no IP Address so that an error message is displayed to users or so that users are directed to a predetermined IP Address that differs from that designated by the specific online location’s IP Address.”

[^f2]: At [15], his Honour explained that IP Address Blocking involves the ISP not routing outbound traffic to the specified address. This apparently can be problematic as it can also block access to other websites stored on the server with the specified address. Hello ASIC, anyone?

[^f3]: At [14], Nicholas J described URL Blocking as comparing the destination address specified in a “packet” of data being routed across the internet to a list of addresses to be blocked and, if there is a match, blocking transmission.

[^f4]: This amount is an interesting contrast to the figures quoted by the Court of Appeal in the [Cartier][cartier] case in England at [19] which ranged from (in GBP) three figures to six figures each year. See also [129] – [150] of [Cartier][cartier].

[telstra]: http://www.austlii.edu.au/au/cases/cth/FCA/2016/1503.html

[cartier]: http://www.bailii.org/cgi-bin/format.cgi?doc=/ew/cases/EWCA/Civ/2016/658.html&query=(title:(+cartier+))

[s115a]: https://jade.io/article/218245/section/5469