In a recent decision by the British Columbia courts (Equustek Solutions Inc. v
Jack , 2014 BCSC 1063), Google has been ordered
to de-index a website selling goods that were the subject of
intellectual property (IP) infringement claims. While this may seem
quotidian - after all, Google does comply with de-indexing requests
on a regular and voluntary basis - this decision has broader
implications for several reasons. This decision is the first
Canadian decision to compel Google to delist a website after the
so-called "right to be forgotten" case in the EU, and
while that case involved personal privacy rights rather than IP
rights, both cases have far-reaching implications for Google's
role in providing a practical remedy for an aggrieved party. This
is a role that Google has resisted, but cannot avoid in light of
its ever-expanding presence in the lives of individuals and the
affairs of business.
The underlying dispute involved a trade-secret misappropriation
and passing-off claim by a manufacturer against a rival company.
Specifically, the plaintiff Equustek alleged that a competing
product known as GW1000 was an unauthorized knock-off, built using
trade secrets of the plaintiff. The plaintiff Equustek won an
initial order barring sales of the offending GW1000 product and
then engaged in a time-consuming process of chasing the defendant
to obtain some meaningful and practical remedy. This involved
repeated requests to Google to block hundreds of specific
individual webpages and URLs from Google Canada search results, a
game that the court described as "whac-a-mole". Finally
the plaintiff sought an order compelling Google to de-index the
defendant's sites from all Google search results worldwide. The
resulting order is important for a number of reasons:
In order to make its order, the court had to assert
jurisdiction over Google Inc. rather than the Canadian subsidiary
Google Canada. In coming to this decision, the B.C. court relied in
part on the EU "right to be forgotten" case.
Interestingly, the court commented that the California
choice-of-law clauses in Google's various user agreements and
advertising contracts did not prevent the Canadian court from
asserting jurisdiction. This is due to the fact that this dispute
did not arise out of any contract-related claims. Rather, the court
found that it had scope to make an order (with extra-territorial
reach) over Google (a non-party) under its inherent jurisdiction
under the Law and Equity Act.
The court also commented on the fact that Google is not merely
a passive site, but rather it conduct active and ongoing business
with British Columbia companies and individuals.
The court found that blocking individual URLs was not as
effective as blocking so-called "mother sites". In
effect, the court agreed that Google's current practice of
voluntarily complying with individual requests to block specific
URLs does not provide an effective remedy. This will certainly be
cited in future website blocking cases.
Regarding Google's role, the court commented that
"Google is an innocent bystander but it is unwittingly
facilitating the defendants' ongoing breaches of this
Court's orders. There is no other practical way for the
defendants' website sales to be stopped."
After renewing the traditional criteria for assessing the merits
of an injunction application, the court granted the order. Google
is appealing this
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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