The very interconnectedness of the Internet that drives business forward through marketing and access to broader consumer bases may result in loses that currently are not easily remedied. However, jurisprudential shifts are occurring to bridge gaps in the common law that are prevalent in the new age of technology. Google v. Equustek Solutions is a recent decision that potentially expands the scope of interlocutory injunctions in order to ensure that trademark passing-off does not continue to be facilitated, even if unintentionally, by a non-party.
Equustek was entitled to an interlocutory injunction to enjoin Google from displaying Datalink’s websites on any of its search results worldwide, and despite Google’s appeal, the decision was upheld by the Supreme Court of Canada in a 7-2 decision. Justice Abella, writing for the majority, emphasized the importance of deference and discretion with regards to interlocutory injunctions, which is highly context-driven to ensure just and equitable outcomes (para 22). The Court found the three-part test in RJR – MacDonald Inc v. Canada (Attorney General) regarding requirements for an interlocutory injunction to be satisfied – there was a serious issue, irreparable harm would result if the injunction was not granted, and the balance of convenience is in favour of granting it.
De-indexing Datalink’s individual webpages rather than entire websites was deemed unsatisfactory because Datalink simply moved the objectionable content to new pages within its websites (para 15). Also, de-indexing searching on www.Google.ca was not an adequate solution because of the large international customer base of Datalink and the fact that individuals can access Google as if they were in another country simply by typing in that country’s Google URL, meaning that potential Canadian costumers could still access Datalink’s websites (para 16). Given the fact that 70-75% of global searches on the Internet are conducted on Google, the Court found that Datalink’s ability to sell its products is contingent on customers accessing Datalink’s websites through Google (para 18). In this way, there were no viable alternative solutions and irreparable harm was established (para 19).
Moreover, the Court rejected Google’s argument that non-parties should not be subject to interlocutory injunctions through the use of various jurisprudential sources such as: MacMillan Bloedel Ltd. v Simpson (paras 28-30), Norwich orders cases (paras 31-32), and Mareva injunction cases (paras 33-35). Google’s argument that extraterritorial reach tipped the balance of convenience also failed because the order does not require Google to take any steps around the world, but rather only where the search engine is controlled, which is not an onerous task (para 43).
On the other hand, this decision has been met with resistance by the US. Recently, upon Google’s request for the US District Court for Northern California’s intervention, Justice Edward Davila took the position that due to Section 230 of the Communications Decency Act – which prevents online platforms from being held responsible for content posted by others – the Canadian order could not be enforced against Google in the United States. Underlying this decision was the motivation to uphold the principles of free speech that underlie both the Internet’s inherently global character and the US’s First Amendment.
Google has yet to respond, though avenues may be available for them to do so. With the result from the US action, Google can re-apply to the Canadian courts to attempt to modify the scope of their original order or simply de-index in Canada alone by relying on the US order as a sort of middle-ground approach.
It is also worth noting that this case has sparked debate about what Canada’s stance will be on the EU’s “right to be forgotten”, and the potential for new developments in the law with respect to this. Overall, it is unclear if this precedent on interlocutory injunctions will be limited to its unique factual matrix or liberally applied in future cases not only within Canada, but also what the status of this Canadian precedent will be internationally in light of the recent US decision. However, what can be clearly taken away from this case is that this area of law is not static, but rather dynamic and evolving.
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