Canada: Supreme Court Of Canada Upholds BC Decision To Grant Worldwide De-Indexing Order Against Google

Last Updated: July 7 2017
Article by Casey Chisick

On June 28, 2017, the Supreme Court of Canada, in Google v Equustek Inc, 2017 SCC 34, affirmed a decision of the British Columbia Court of Appeal granting a worldwide interim injunctive de-indexing order against Google to block specific websites.

The SCC held that Canadian common law courts have the jurisdiction to make global de-indexing orders to curb illegal activities on the Internet and that the BC Superior Court did not err by doing so in this case. Although this case dealt specifically with the sale of products allegedly manufactured in violation of the plaintiff's trade secrets, the decision has potentially far-reaching implications for the enforcement of rights in other areas of law – especially when dealing with the realities of a borderless Internet.

Background

This decision arose out of a British Columbia lawsuit over trade secret infringement. Despite a series of interim injunctive orders to restrain its conduct pending trial, the defendant removed itself from the provincial jurisdiction of the court, disappeared and continued selling the allegedly infringing products online while incognito. In response, the plaintiff (Equustek) sought assistance from Google, asking the search engine to de-index or take down the search results leading to the defendant's website.

Google voluntarily took down the search results on google.ca, but refused to do so on any of its non-Canadian domains. Google also resisted removing or de-indexing all of the defendant's web pages. This led to the decision of the BC Superior Court in Equustek Solutions Inc v Jack, 2014 BCSC 1063, where the Court ordered Google to take down its search results for the defendant's websites worldwide on the basis that the defendant could simply move the offending material to other web pages or to a domain outside of Canada in order to circumvent the order. The decision of the motion judge was affirmed by the British Columbia Court of Appeal in Equustek Solutions Inc v Google Inc, 2015 BCCA 265.

Before the Supreme Court of Canada, Google did not dispute the seriousness of Equustek's claim, nor did it suggest that it would be inconvenienced or suffer significant expense in de-indexing the websites. However, Google objected to the proposed injunction for several reasons, arguing that the injunction was neither necessary nor effective; as a non-party Google should be immune from the injunction; there was no necessity for the extraterritorial reach of the order; and there were concerns regarding international comity and freedom of expression that militated against granting the order.

The Supreme Court of Canada, in a 7 to 2 majority decision written by Justice Abella, affirmed the decision of the BC Court of Appeal.

Key Findings

Justice Abella the issue on appeal as whether Google could be ordered, pending a trial, to globally de-index the website of a defendant who, in breach of several court orders, was using those websites to unlawfully sell products that infringed the intellectual property of another company.

The SCC ultimately answered this question in the affirmative, holding that the test for granting an interlocutory injunction had been met in this case. Equustek successfully demonstrated that there was a serious issue to be tried, that it was suffering from irreparable harm as a result of the ongoing sale of the competing, and allegedly infringing, product through the Internet, and that the balance of convenience was in favour of granting the order sought.

Based on this, the SCC confirmed that injunctive relief can be ordered against someone who is not a party to the underlying lawsuit. Justice Abella reasoned that this is appropriate when the third party is so involved in the wrongful acts of others that it effectively facilitates the harm, even if the third party itself is not guilty of any wrongdoing.

The granting of the interim injunction in this case flowed from the need for Google's assistance to restrict the wrong-doer's ability to defy court orders and do irreparable harm to the plaintiff. The court concluded that without interim injunctive relief, there would be no effective way to address the needs of Equustek pending trial. Google would simply continue to facilitate the ongoing harm.

Regarding the extra-territorial scope of the order, Justice Abella reasoned that, where necessary to ensure the effectiveness of the injunction, a Canadian court may grant an injunction enjoining conduct anywhere in the world. In this case, this was the only way to ensure that the injunction could achieve its objective. If the order were restricted to Canada, foreign purchasers could still purchase from the illicit website, and even Canadian purchasers could locate the website through google.com and other local Google sites even if it were de-indexed from google.ca.

Google argued that a global injunction violated international comity because it was possible that the order could not have been obtained in a foreign jurisdiction, or that to comply with it would result in Google's violating the laws of another jurisdiction. The majority rejected that argument as theoretical. Justice Abella observed instead that, if Google has evidence that complying with the injunction would violate the laws of another jurisdiction, it is free to apply to the British Columbia courts to vary the interlocutory order. In the absence of an evidentiary foundation, and given Google's right to seek a rectifying order, the majority concluded that it would not be equitable to deny Equustek the extraterritorial scope it needs to make the remedy effective.

Justice Abella concluded by emphasizing the fact that the wrongdoers had ignored all previous court orders made against them, had left BC, and had continued to operate their business from an unknown location outside of Canada. Since a world-wide injunction was the only effective way to mitigate the harm to Equustek pending trial, and since any countervailing harm to Google wass minimal to non-existent, the interlocutory injunction should be upheld.

Lessons Learned

This case raises fundamental issues regarding the jurisdiction of Canadian courts, as well as the enforcement of court orders online.

Today, the power to make orders against search engines is often essential to preserving the effectiveness and integrity of the courts. The rise of illegal activity on the Internet has led to troubling consequences for claimants, especially those who seek to protect their intellectual property. Going online often provides infringers with anonymity, allowing them to flout the law and often rendering claimants without any direct means of enforcing court orders.

As Justice Abella reasoned in her decision, the only method of guaranteeing the effectiveness of a de-indexing or site-blocking injunction is to ensure that the remedy has some extraterritorial effect. Allowing for the possibility of global orders against search engines may help the courts balance the interests of claimants, with those of search engines and the public.

This decision is also consistent with developments in many of Canada's major trading partners, including both the United States and the European Union. Illegal activity over the internet is a global problem that requires a global solution. Recognizing the necessity extraterritorial orders against online service providers who facilitate the dissemination of infringing content is an important step towards realizing that solution.

Of course, questions remain. Would the Court have ruled the same way if complying with the order had indeed rendered Google vulnerable under the laws of another jurisdiction? Would the result have been different had the conduct of the defendant been less egregious? As Justice Coté noted in her dissent, the interim order in this case essentially amounts to a permanent injunction without trial; indeed, the plaintiff in the underlying case has yet to seek default judgment against the absent defendant, despite having been granted leave to do so in 2012. It seems possible that a court would hesitate before ordering a similarly broad injunction against a more responsive defendant. Cases that legitimately implicate competing values such as freedom of expression or international comity – which the majority expressly found not to be at issue in Equustek – might also be approached with caution.

On the other hand, the SCC appears increasingly inclined to take a broad view of the jurisdiction of Canadian courts in Internet-related cases. Equustek followed closely on the heels of the SCC's June 23 decision in Douez v Facebook Inc., in which the Court overrode Facebook's forum selection clause to revive a privacy class action brought in BC against the social media giant. In that case, the majority of the Court held that the automatic nature of the online contract gave Facebook a gross "inequality of bargaining power" and raised public policy considerations that warranted heightened scrutiny in the traditional forum selection analysis. In its analysis, the Court found that the "quasi-constitutional" nature of the rights at stake gave Canadian courts a greater interest in adjudicating the matter, despite an otherwise enforceable forum selection clause that referred jurisdiction to California.

In any event, the Equustek decision represents a hard-won victory not only for Equustek itself but for rights holders in general, many of whom participated, through their trade associations, as interveners in the proceedings before the BC Court of Appeal and the SCC. The impact of the decision seems likely to extend beyond the limited realm of trade secrets and into other types of intellectual property, including copyright and trademarks. Its broader implications for the law, including in cases involving privacy, cybersecurity, defamation, and other issues, will become apparent only with the passage of time.

The author gratefully acknowledges the assistance of Joseph Hamaliuk, a summer law student at Cassels Brock, in the preparation of this article.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Casey Chisick
Similar Articles
Relevancy Powered by MondaqAI
MacDonald & Associates
Goldman Sloan Nash & Haber LLP
Bereskin & Parr LLP
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
MacDonald & Associates
Goldman Sloan Nash & Haber LLP
Bereskin & Parr LLP
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions