Supreme Court of Canada Upholds Worldwide De-Indexing Order Against Google

Gilbertson Davis LLPAppeals, Brand Protection, Commercial, Commercial Litigation, Counterfeit Goods, Cross-Border Litigation, Cyber Risks, eCommerce | Online Retail, Information Technology, Injunction & Specific Performance, Intellectual Property, Internet | Technology, Of Interest to US Counsel, Technology and Internet0 Comments

The Supreme Court’s recent decision in Google Inc. v. Equustek Solutions Inchas approved the use of a worldwide injunction directing Google to de-index the defendant’s website used to facilitate the sale of goods in violation of the Equustek’s intellectual property rights.

Equustek obtained an interlocutory injunction against the website owner directly, however the defendant left Canada, refused to comply with the order, and continued to sell products on their website from an unknown location. To help prevent or reduce further ongoing harm, Equustek sought for Google to de-index the site, making it less likely that a potential purchaser will discover the infringing website.

Google initially agreed to de-index the result from Canadian search results on, but refused to enforce this order worldwide. It was concerned that the Canadian courts were using Google to usurp the laws of other nations, particularly on free speech issues, and potentially would force Google to contravene the laws of other nations by effecting this order in other countries. De-indexing for alone was insufficient for Equustek, since the infringing website sold products to customers in many countries, and requiring Equustek to obtain an identical order against Google in every nation would be time- and cost-prohibitive.

In a 7-2 decision, the Supreme Court of Canada upheld the order against Google, requiring them to effect the order worldwide. The court noted that worldwide injunctions are often ordered, including against non-parties to the dispute, for instance when freezing orders are directed at banks to freeze a person’s assets worldwide. The court dismissed Google’s concerns about violating the laws of other nations as hypothetical and speculative. Google was unable to show that preventing further breaches of intellectual property rights violated free-speech rights or other laws of any other nation, and noted that if such an issue arose, Google could move to vary the injunction with respect to that nation.

The minority took a different approach. Rather than focusing on the international comity issues, the minority took issue with the granting of the injunction at all. It was concerned that the court was asking Google to continually monitor the defendant’s internet activity and de-index new website URLs as and when the defendants created new web pages. The minority was further concerned that the injunction was ineffective since de-indexing the webpages did nothing to actually prevent the continued operation of the website or the creation of new infringing websites, nor did it prevent the website from appearing on the search results of any other search engine. They were also concerned that there were more effective alternative orders that could have been sought, but were not, including an order against ISPs to prevent the website from being accessible in the first place.

For plaintiffs involved in online disputes, the majority’s decision provides clear practical benefits to persons whose rights are infringed by the online activity of another. By directing an order to be enforced globally, it significantly assists plaintiffs to obtain effective results online, since enforcing rights one country at a time will be prohibitive to even the largest organizations.

If you are involved in an injunction dispute, online dispute, or intellectual property dispute, contact us for an initial consultation.

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