The B.C. Supreme Court has ordered Google to block certain
websites from its search results worldwide.
In a trade secret and passing off lawsuit, the defendants were
previously ordered not to sell their electronic devices through
websites by the B.C. Court. The defendants, operating entirely as a
virtual company, did not comply with such court orders and
continued carrying on business through a complex and ever expanding
network of websites. While not a party to the proceedings, Google
voluntarily removed specific websites from its Google.ca,
Canada-specific search results; however, Google was unwilling to
block an entire category of URLs (sometimes referred to as
"mother sites"), from its search results worldwide. As a
result, the defendants' Datalink websites continued to come up
in searches on other Google sites accessible by Canadians.
This led the plaintiff to seek a third party interim injunction
against Google, taking the position that Google's search engine
facilitates the defendants' ongoing breach of one of the
initial court orders by leading customers to the defendants'
virtual business websites.
Google responded that the B.C. Court does not have jurisdiction
over it because it is not present in British Columbia, and because
the application for an injunction does not relate to Google doing
or refraining from doing anything in either British Columbia or
Canada. Google argued that even if the Court did have jurisdiction,
the order sought should not be made: (i) because it would amount to
a worldwide order that could not be enforced; and (ii) because it
would constitute an unwarranted intrusion into Google's lawful
business activities as a search engine.
The case raises two interesting questions: (i) Does the B.C.
Court have territorial competence over a worldwide internet search
provider?; and (ii) Should Google be ordered not to generate and
show search results that provide hyperlinks to the Datalink
websites which advertise and sell infringing products?
The B.C. Court decided it had the power to grant injunction
against Google since it considered that Google had a real and
substantial connection with B.C. and was within the Court's
territorial jurisdiction. While advertising in a jurisdiction alone
is generally not sufficient to grant territorial competence, Google
is not advertising its own business, but rather going beyond by
engaging with customers and providing them with user-specific,
non-Google brand advertising. Additionally, Google sells ad space
to B.C. businesses and had previously sold ad space to the
defendants, and as result, was carrying on business in B.C.
Google as a facilitator of the defendant
Foreign "passive" websites have traditionally been
off-limits for Canadian courts. However, the B.C. judge held that
Google was an active not passive participant given Google's
customized search results based, in part, on Google's past
experience with that searcher.
The B.C. judge decided that although Google was an innocent
bystander, it was unwittingly facilitating the defendants'
ongoing breaches of the Court's orders. Moreover, there was no
other practical way for the Datalink websites' sales to be
stopped, and no other way to remove those websites from
Google's search results.
Implications of decision on brand owners
It remains to be seen whether this decision remains entirely
fact-specific, or has far reaching implications in respect of
future court orders in Canada. Google has indicated that it will
appeal the decision.
The potential reach of this decision should be noted by brand
owners seeking to give practical effect to existing court orders
that are difficult to enforce online. Normally, a Canadian court
will not assume jurisdiction over a foreign company unless it has a
significant connection to Canada. With jurisdiction extending to
Google, the B.C. Court has indicated that there is risk of legal
liability in any jurisdiction, and certainly in Canada, to
companies engaging in worldwide business activities through online
reach. Further, while the B.C. Court finds Google an "innocent
bystander" in this case, the decision nonetheless recognizes
Google's unwitting involvement in, and enabling of, the
infringing activities of the defendants. It remains to be seen if
this can lead to Canadian law giving effect to secondary liability
for trademark infringement in the context of online usage, which
has not been the case to date. It also remains to be seen how and
if this will impact Google's current AdWord Policy in Canada,
which only provides a take-down mechanism for third-party
advertisements which display the complainant's
trademarks in the text of the ad, rather than use of the
complainant's trademarks as key terms to generate ads
when conducting searches on Google.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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The Federal Court dismissed a motion by Apotex seeking particulars from Allergan's pleading relating to the prior art, inventive concept, promised utility and sound prediction of utility of the patents at issue.
Last year we saw the Canadian Courts release trademark decisions that granted a rare interlocutory injunction, issued jailed sentences for failure to comply with injunctive relief, grappled with trademark and internet issues...
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