Admitting Evidence From The Internet: Authentication Is Still Required
A version of this article was published in the Maryland Bar Association Intellectual Property Section Bulletin, June 2008 edition.
Mr. Peabody may have been ahead of his time in going back in time. When the famous cartoon dog instructed his pet boy Sherman to “Set the Wayback Machine,” the cartoonist could not have known that the name would be adopted as a useful tool on the Internet. The “Wayback Machine” at www.archive.org provides older versions of websites which have since changed. Information from the site has been the focus of procedural disputes in the courts and at the US Patent and Trademark Office. Under trademark law, where first use -- and the manner of use -- of a brand name is a critical element in any dispute, the ability to look at historical uses of a trademark is extremely helpful. The www.archive.org website really is an historical treasure-trove.
Recent cases have shown, however, that there is still somewhat of a chasm between finding information on the Wayback Machine (or elsewhere on the Internet) and introducing the information into evidence. The issue is authentication under Section 901 of the Federal Rules of Civil Procedure.
In Paris Glove of Canada, Ltd. v. SBC/Sporto Corp., 84 USPQ 2d 1856 (TTAB 2007), the Trademark Trial and Appeal Board recently held that evidence gathered from the Internet must still be authenticated, and information gathered from the Wayback Machine is no exception. In Paris Glove, the applicant was trying to show historical use of its website. Applicant argued that information from the Wayback Machine was self-authenticating under the rule that materials qualifying as printed publications, including electronic versions, are considered self-authenticating. The applicant contended that because the Wayback Machine was so voluminous and includes so many versions of websites, that it was equivalent to a printed publication.
The Board focused on its prior decision, Raccioppi v. Apogee, Inc., 47 USPQ 2d 1368 (TTAB 1998), in which it held that Internet printouts which are not the electronic equivalent of printed publications are not self-authenticating. Such evidence may only be admitted if properly authenticated by an affidavit or declaration pursuant to the Federal Rules and Trademark Rule 2.122(e).
The Board disagreed with applicant and disallowed applicant from using materials off of the Wayback Machine without proper authentication. Because the Wayback Machine only copies what its operators identify as “significant change,” the Wayback Machine might not have captured all versions, and therefore it is not the equivalent of a print version.
In an unrelated case, Judge Grimm has recently provided a good roadmap for using information from the Internet as evidence in Maryland Federal cases in Lorraine v. Markel Am. Ins. Co., 241 F.R.D. 534 (D. Md. 2007).
The end result is that if an attorney is looking to provide information off of the Internet, when the information is not a mere reproduction of a printed work, the submission must be authenticated for it to be properly introduced evidence.
Anyone operating an Internet website, or scouting a competitor’s website, should periodically print out the entire website, in case there is ever a future dispute. Although some websites may be too voluminous to warrant printing out frequent copies, the failure to take this precautionary action may require the lawyer -- when pressed to produce proper evidence from the Internet -- into having to declare to the judge those immortal words of our hero Bullwinkle: “Watch me pull a rabbit out of my hat.”