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Admissibility of Electronic Evidence





September 22, 2009

Sponsoring Committee: Discovery Practices & Procedures Subcommittee of the Enforcement Committee


Resolution

WHEREAS, trademark proceedings may involve the submission of evidence addressing issues such as trademark use, descriptiveness, distinctiveness, and other criteria; and

WHEREAS, the nature of evidence may involve information derived from the Internet and other electronic sources;

BE IT RESOLVED, that it is the position of the International Trademark Association that electronic evidence should be admitted in the same manner as any documentary evidence as long as it has been authenticated by an observer of the evidence.


Background

Electronic evidence has become an important means to prove issues commonly involved in trademark proceedings. Electronic evidence is often relevant and probative on issues such as use, strength of the mark, relevant class of consumer, channels of trade, priority, descriptiveness and genericness. To develop recommendations on harmonization, the Discovery Practices & Procedures Subcommittee of the Enforcement Committee researched trademark cases from various jurisdictions which involve electronic evidence. A summary of the case law is contained in the supplemental report entitled “The Admissibility of Internet and Electronic Evidence in the Courts.” The research demonstrates that courts and tribunals are inconsistent in their treatment of websites and other electronic evidence. Various courts treat electronic evidence differently. Some courts require authentication from the owner of the website; others look for authentication from the information technology department. The Subcommittee felt that the electronic evidence should be authenticated simply by an observer of the electronic evidence who can aver to the veracity and accuracy of the electronic image and its print out . Electronic evidence should be treated with the same level of scrutiny as traditional forms of evidence. Such treatment will promote predictability in trademark proceedings, thereby benefiting all parties. The weight to be given to any piece of evidence, electronic or otherwise, is determined by the court or tribunal.

The Subcommittee discussed whether it may be helpful to define minimum standards or best practices for authenticating and admitting such evidence. Some courts have excluded as evidence printouts of websites as demonstrated in St. Luke’s Cataract & Laser Institute, P.A. v. Sanderson, 2006 WL 1320242, at *2 (M.D. Fla. 2006) where the proponent failed to authenticate printouts of websites obtained from Internet Archive because affiants lacked personal knowledge of contents of Internet Archive’s website and process, and in Sun Protection Factory, Inc. v. Tender Corp., 2005 WL 2484710, at *6 (M.D. Fla. 2005) where the proponent failed to authenticate printouts of websites because affiant’s statements were hearsay and websites are not self-authenticating. The St. Luke’s decision cited Telewizja Polska USA, Inc. v. EchoStar Satellite Corp., 2004 WL 2367740 (N.D. Ill. 2004) in which the Court admitted a website obtained from an Internet Archive based on affidavit from administrative director for Internet Archive.

The practice among many attorneys in the United States is to have a paralegal or secretary print out a website and then prepare an affidavit stating that the printout is a true and correct copy of the website. To avoid any possibility that a deposition or cross-examination may reveal privileged matter, having a secretary prepare the printout and affidavit is advisable.

The risk of cross-examination of the person preparing the affidavit is a particular concern in Canada, where typically law firms obtain the affidavit from an independent source (i.e., another law firm). The Subcommittee collected information on the procedures in Canada, the United States and other jurisdictions to develop the Subcommittee’s position.

The Subcommittee identified the following points as suggestions for authenticating a website: 

  1. The person observes the website and supervises the printing of such site. 
  2. In the event that the website is a source of goods sold, or services offered, it is advisable to have the person actually purchase products or obtain the service in question in the event that the party seeking to rely on the website evidence intends to use it as evidence of commercial activity instead of simply the existence of the website. 
  3. The person swears or affirms that the exhibit is a true and accurate copy of the website at the date and time observed.
Representation, reproduction or copy are all terms that describe the exhibit. The exhibit itself may be presented in hard copy or electronic form.

Based on its research and analysis, the Subcommittee recommends that INTA’s Board approve a resolution affirming INTA’s position that electronic evidence should be authenticated by an observer of the evidence and admitted in the same manner as any documentary evidence.