On February 18, 2016, the Supreme Court of Canada (“SCC”) granted Google Inc.’s (“Google”) application for leave to appeal the decision in Equustek Solutions v Google Inc., regarding the power of Canadian courts to grant orders that have worldwide impact.
The facts which brought about the appeal arose from the attempt by Equustek Solution Inc.’s (“ESI”) to enforce their intellectual property rights against a former distributor of ESI’s products. The distributor was unlawfully appropriating ESI’s intellectual property, including trade-marks, and trade secrets, to manufacture counterfeit ESI products. ESI was successful in obtaining court orders against the former distributor prohibiting them from selling the competing products online. However, the distributor did not comply with the court order and the infringing products continued to be sold.
When the court orders proved ineffective, ESI sought a court order against Google, who was not a party to the dispute, in order to restrain it from publishing search results that sold or advertised the counterfeit products. The Supreme Court of B.C. granted a worldwide injunction against Google, and held that the court had jurisdiction to maintain the rule of law, and to protect its processes, which in an appropriate circumstance may include issuing an injunction against non-parties. The Court of Appeal upheld the injunction in an attempt to limit public access to the websites that the former distributor had been using to advertise and sell its products. The injunction required compliance not only with Google’s search results that displayed in Canada, but also the search results that displayed worldwide.
The Supreme Court of Canada briefly outlined the issues to be considered:
- Under what circumstances may a court order a search engine to block search results, having regard to the interest in access to information and freedom of expression, and what limits (either geographic or temporal) must be imposed on those orders?
- Do Canadian courts have the authority to block search results outside of Canada’s borders?
- Under what circumstances, if any, is a litigant entitled to an interlocutory injunction against a non- party that is not alleged to have done anything wrong?
The case will likely raise very important questions regarding the freedom to access information on the internet, and whether one country can determine what the rest of the world can see online. Additionally, guidance on remedies for intellectual property infringement from the Supreme Court of Canada is a rare occurrence. Charities and not-for-profits seeking to enforce intellectual property rights in an online world where infringers may not be located in Canada will want to closely monitor this decision, as it may introduce novel tools to enforce intellectual property rights in the digital era where cross-border activities frequently occur.