Web archives: Is it an admissible mode of evidence…
Web archives: Is this a permissible form of evidence of intellectual property infringement rights on the Internet ?
When a rights holder notices an infringement of its intellectual property rights on the Internet – infringement of its trademark, copyright, design rights or any other infringement – the question of proof of the infringement is essential.
Evidence gathered prior to the initiation of the action may be insufficient. The question then arose as to whether it was possible to prove post-infringement on the Internet by using the Web Archive website, which makes it possible to consult the content of websites as they were at certain times in the past.
For example, the Web Archive site will allow you to find out if a website was used in an interrupted manner or what the content of the site was on the dates it was “sucked” into the web archive.
The first decision referring to the Web Archive was issued in 2004 (TGI Paris, 3rd Chamber, 1st Section, June 30, 2004).
Then, the position of the Courts, particularly on the admissibility of the modes of evidence, evolved.
From 2010 to 2014, several decisions were issued, both by the ‘Cour d’appel de Paris’ and the ‘Tribunal de Grande Instance de Paris’, refusing to consider that the Web Archives were a reliable mode of evidence.
Before the Court of Appeal, a report had been made on the archives.org site and had revealed the existence of pages infringing the rights of the plaintiff in the proceedings.
However, the Court of Appeal considered “that the indication of the above-mentioned dates on the search results page relating to the archived pages of the M6 Boutique site during the years 1996 to 2009 of The Wayback Machine site and at the bottom of the prints of the screen pages does not establish with certainty that on each of these dates, the corresponding screen page was displayed in the printed configuration (CA Paris, Pôle 5, ch. 2, July 2, 2010 n°09/12757).
The Court of Appeal noted that the report had been made on the basis of “an archiving service operated by a third party to the procedure, which is a private person without legal authority, whose operating conditions are unknown and “that it appears from the extract of the questions asked about its operation that this research tool is not designed for legal use.
The ‘Tribunal de Grande Instance de Paris’ subsequently upheld the aforementioned decision on several occasions, adopting the reasoning adopted by the Court of Appeal (TGI Paris, 3rd Chamber 2nd Section, March 9, 2012, No. 10/05343; TGI Paris, 3rd Chamber 1st Section, September 18, 2012, No. 11/04409; TGI Paris, 3rd Chamber 3rd Section, September 13, 2013, No. 11/02011).
For the Court, the extracts of the Web Archives site, even if they were recorded by a bailiff, are without probative value.
This website has not been considered to be admissible evidence of genuine and continuous use of a trade mark in a trade mark revocation action or of prior use of a design in a copyright action .
The Courts seemed to be stuck on this jurisprudential position, even though this site is a reliable site used by many professionals to review he content of sites on fixed dates in the past.
At the same time, WIPO experts have accepted the validity of information from online archiving services such as the Web Archive (WIPO, No. D2011-0421).
On May 19, 2014, the ‘Cour d’appel de Paris’ (Pole 5, Chamber 1) proceeded with a comparison of websites with reference to the archive.org website.
In May 2014, the Technical Board of Appeal of the EPO (European Patent Office) issued a particularly interesting decision as it ruled on the validity of the Web Archive consultation as a mode of evidence.
The EPO Board of Appeal reverses the decision of the Office which considered that, as a matter of principle, Internet archives are not reliable.
For the EPO Board of Appeal, unless there are special circumstances that cast suspicion on the content of the archive on www.archive.org, the fact that a document has been archived in this way is in itself a sufficient presumption that the document has been accessible to the public. For the Chamber, although this source may sometimes be incomplete, this does not affect the credibility of the information available.
The EPO Board of Appeals explains how the Web Archive works and states that it is a private, non-profit archiving initiative that makes past snapshots of the Internet available to the general public and that since its inception in 1996 has become very popular and well regarded.
Thus, it would not be sufficient for the party challenging this evidence to simply invoke the unreliability of the Internet archive in order to cast doubt on the date of public accessibility of a document archived on that site.
This is what the TGI of Paris retained in 2017 by admitting the admissibility of a bailiff’s report established on archive.org as long as “The defendants merely questioned the probative value of this report as coming from an archiving site that was a third party to the proceedings, without producing any element that would contradict it. (TGI Paris, 3rd ch., 2nd sect., Jan. 27, 2017, n°13/09456).
It was then the Paris Court of Appeal that finally reversed the case law, rejecting the requests to cancel the bailiff’s report on the grounds that “all the technical requirements on the archiving site having been fulfilled, it cannot be considered that the operations of the judicial officer […] would not be reliable nor necessarily deprived of any probatory scope”. (CA Paris, pole 5, ch. 2, July 5, 2019, n°17/03974).
Thus, as long as the technical requirements were respected by the bailiff during his verbal report, in accordance with the AFNOR standard of 2010, the proof of the content of the archives.org website is admissible.
Since then, case law has continued to admit the admissibility of bailiff’s evidence of content on Internet archive sites, such as archives. The ‘Cour d’appel de Lyon’ and the ‘Cour d’appel de Paris’ have rejected the request of a party who had asked for the exclusion of a document or a bailiff’s report on the grounds that they were not reliable (CA Lyon, ch. 3 A, March 4, 2021, n°18/02696; CA Paris, pole 5, ch. 1, March 2, 2021, n°19/01351).
In a recent dispute concerning a design infringement between MONOPRIX and COMPTOIR DES COTONNIERS, the probative value of pages from the archive.org website was not even discussed before the judges (CA Paris, Pôle 5 – chamber 2, November 26, 2021, n° 20/03316)
In the context of an action in trademark forfeiture (sign ALFEO), the INPI recalled the position of the ‘Cour d’appel de Paris’ in rejecting the plaintiff’s argument that “the screenshots of the home page of the website www.alfeo-coc.com taken from the website archives.org are inadmissible in court because they were taken under unknown conditions (INPI, July 28, 2021, DC 20-0095).
These contents are therefore admissible as evidence of trademark use.
The ‘Cour d’appel de Grenoble’ went further with regard to screenshots, and considered that “if the court must assess the probative value of the documents submitted to it, this does not render these documents inadmissible, so that the appellant’s request that they be excluded from the debates must be rejected (CA Grenoble, January 28, 2021, n° 18/01581).
This decision must however be tempered by the fact that the reliability of such captures is difficult to establish without the assistance of a bailiff.
It is in this sense that the ‘The Cour d’appel de Monpellier’ rejected screen prints on the grounds that they did not guarantee the reliability of their media, contents and dates (CA Montpellier, May 15, 2020, n° 17/02469).
In conclusion, if the production of evidence produced within the framework of legal proceedings must be supervised, it is also essential to make use of technical developments and to use them to prevent infringements from being abused before the courts.
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