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Case Comment

Rajwant Singh Bamel


Google Inc. v. Equustek Solutions Inc., 2017 SCC 34

Equustek (E), the plaintiff, filed a case against Datalink (D), the defendant, for infringement
of its intellectual property. Google, a non-party to the dispute, was granted by the Supreme Court
of Canada an interlocutory injunction to remove all the websites relating to the defendant company
from its entire search engine worldwide. The Supreme Court (majority opinion 7:2) found that it
would be just and equitable, to grant an interlocutory injunction to Google to de-index all the
defendants websites from its global search platform, in order to prevent the irreparable harm that
might be caused to the plaintiff. The dissenting opinion (2:7) in this case was that there should
have been a judicial restraint in granting injunction, and that google is a non-party and considering
the ineffectiveness of the interlocutory injunction, the Google Order ought not have been granted
as there were alternative remedies available to the plaintiff.

The Supreme Court of Canada neither imposed any obligations on the search engine, Google, not
did it hold it liable for facilitating access to the impugned websites. In the interest of justice, the
court stated that:
Even if it could be said that the injunction engages freedom of expression
issues, this is far outweighed by the need to prevent the irreparable harm that
would result from Googles facilitating Datalinks breach of court orders.1

I am of the opinion that this judgement has laid down an unprecedented foundation in the area of
establishing jurisdiction over Internet: The No-Law Land2 and hence protected any irreparable
harm that may be caused. This judgement will change the entire approach of the court towards
their jurisdictions in a global internet environment.

Relevant Facts

1Google Inc. v. Equustek Solutions Inc., 2017 SCC 34, Para 49


2lose Gratton, http://www.eloisegratton.com/blog/2017/07/05/%E2%80%8Bgoogle-inc-v-equustek-solutions-inc-supreme-
court-gives-the-green-light-to-global-orders-to-take-down-search-results/, July 5, 2017
E is the manufacturer of networking devices and D was a distributor of its products. D relabeled
Es products and sold them as their own, and additionally manufactured counterfeit products by
using Es trade secrets and confidential information. E terminated their agreement with D upon
finding out about this violation of their Intellectual Property (IP) Rights and requested D to take
down all information about E from their respective website. E further filed a case against D for
infringement of their IP rights.

During this on-going litigation, D abandoned proceedings and left the jurisdiction and continued
with his online business from a miscellaneous location. Court passed interlocutory injunction to D
to return the IP of E and further froze the assets of D.
D was operating his business through the internet. Google Inc. (Google) is a company that
handles the majority of the worldwide web search. E requested Google to de-index Ds websites,
in response to which Google requested a court order. When E obtained the order, Google promptly
removed 345 webpages related to D from the Canadian domain of Google, google.ca. It still did
not remove the entire website or de-index it from the world-wide domain at google.com.

D kept moving the content from the de-indexed webpage to any other webpage of his websites. E
moved to the court to request for an interlocutory relief for removal of all the websites related to
D from its global search engine, and hence an interlocutory injunction was granted by the trial
court. Google appealed this decision in the Court of Appeals of British Columbia but it was denied.
Finally, an appeal was made by Google in the Supreme Court of Canada.

Analysis

The central issue that the court had to deal with was whether Google can be ordered pending a
trial, to globally de-index the websites of a company which, in breach of several court orders, is
using those websites to unlawfully sell the intellectual property of another company 3. To arrive
at the conclusion, as to whether the court was just and equitable in deciding the case, the court had

3 Google Inc. v. Equustek Solutions Inc., 2017 SCC 34, Para 1


to consider the three-part test from the case of RJRMacDonald Inc. v. Canada (Attorney
General), [1994] 1 S.C.R. 311:

i) Is there a serious issue to be tried?


ii) Would irreparable harm result if the injunction were not granted? and
iii) Does the balance of convenience favour granting or refusing the injunction?

Fenlon J., in the Court of Appeal, noted that Ds ability to sell the counterfeit products was
contingent on customers being able to locate its website through Googles search engine. The only
possible remedy could have been to stop the customers from accessing the websites and not merely
the webpages, around which D already found a way. Failing to do so would have caused irreparable
damage to E which would not have been possible to be recovered after the end of the lawsuit.
Fenlon J. also stated that she has in personam jurisdiction over Google and could therefore make
an order with extraterritorial effect.4 When a court has in personam jurisdiction, and where it is
necessary to ensure the injunctions effectiveness, it can grant an injunction enjoining that persons
conduct anywhere in the world.5

Google itself did not dispute the seriousness of the claim but it argued that the injunction issued
against it is not necessary to prevent that irreparable harm, and that it is not effective in so doing.
Further, they said that non-party cannot be the subject of an interlocutory injunction. Citing the
case of MacMillan Bloedel Ltd. v. Simpson [1996] 2 S.C.R. 1048, the court stated that injunctions
may be issued in all cases in which it appears to the court to be just or convenient that the order
should be made . . . on terms and conditions the court thinks just (para. 15, citing s. 36 of the
Law and Equity Act, R.S.B.C. 1979, c. 224). The non-partys obligation arises not because [it] is
bound by the injunction by being a party to the cause, but because [it] is conducting [itself] so as
to obstruct the course of justice.6

4 Google Inc. v. Equustek Solutions Inc., 2017 SCC 34, Para 20


5 See Impulsora Turistica de Occidente, S.A. de C.V. v. Transat Tours Canada Inc., [2007] 1 S.C.R. 867, at para. 6; Berryman, at
p. 20; Pitel and Valentine, at p. 389; Sharpe, at para. 1.1190; Spry, at p. 37.
6 MacMillan Bloedel, at para. 27, quoting Seaward v. Paterson, [1897] 1 Ch. 545 (C.A.), at p. 555
Courts have fashioned a mechanism to compel innocent third parties to provide documents and
information to a potential plaintiff for the purposes of starting a lawsuit. This remedy, commonly
referred to as Norwich Orders7, is available where the applicant believes it has been wronged and
needs the third party's assistance to determine how to pursue its legal remedies.8 This was
characterized as the duty to assist the person who has been wronged. In the present case, E was
being wronged as his products were firstly sold by D as his own by rebranding them. Secondly D
was using Es IP in order to manufacture counterfeit products. Finally, D was using a global
platform like Google, to sell these counterfeit products, which violated Es IP rights.

In the Cartier case, the Court of Appeal of England and Wales held that injunctive relief could be
awarded against five non-party Internet service providers who had not engaged in, and were not
accused of any wrongful act. The Internet service providers were ordered to block the ability of
their customers to access certain websites in order to avoid facilitating infringements of the
plaintiffs trademarks.9 Marvera injunctions are used the same way, to freeze assets in order to
prevent their dissipation pending the conclusion of a trial.10 Globally, countries have accepted and
respected such orders including the countries mentioned in the present case, France, Spain, Ireland.

Google stated that de-indexing the webpages in Canada domain should have been the only remedy.
The court, however, disagreed and emphasized that there is no equity in ordering an interlocutory
order which has no realistic prospect of preventing irreparable harm.

Googles argument that a global injunction violates international comity because it is possible that
the order could not have been obtained in a foreign jurisdiction, or that to comply with it would
result in Google violating the laws of that jurisdiction is, with respect, theoretical. However,
Fenlon J. noted that Google acknowledges that most countries will likely recognize intellectual
property rights and view the selling of pirated products as a legal wrong.11

7 Norwich Pharmacal Co. v. Commissioners of Customs & Excise, [1974] A.C. 133 (H.L.) at 175
8 See at: https://www.bennettjones.com/Publications/Updates/Norwich_Orders/
9 Cartier International AG v. British Sky Broadcasting Ltd., [2017], 1 All E.R. 700 (C.A.), at para. 53).
10 Mareva Compania Naviera SA v. International Bulkcarriers SA, [1975] 2 Lloyds Rep. 509 (C.A.)
11 Google Inc. v. Equustek Solutions Inc., 2017 SCC 34, Para 44
If complying with such an order made Google breach laws of another country, then Google had a
right to approach the court and request for varying or vacating the injunction. However, Google
moved no such application in the court. Google never suggested that it will be inconvenienced in
any material way, or would incur any significant expense, in de-indexing Ds websites. Hosting
the websites at its search engines did not make Google liable for the harm but it indeed was a
determinative player in allowing the harm to occur.

The dissenting opinion was that that the injunction was, in effect, permanent in nature and hence
subject to a different test with a higher burden than an interlocutory injunction. It was concluded
that Google was a third party which did not participate in the present offence, and the injunction
required ongoing court supervision, considering multiple issuances/revisions of injunction order
and thus was an onerous use of the court and publics resources.12

Comments and Conclusion

I am of the opinion that the court followed the right approach in delivering this judgement. The
three-step test for interlocutory injunction was met. A serious issue about Es IP rights was being
tried; E was suffering irreparable harm and the balance of convenience was in favour of granting
the order that was sought. It was cautious in following all the legal principles at hand and referring
to previous landmark cases. Es rights were being infringed by D, who was making a insulting the
courts and its orders by deliberately and consistently disobeying them.

This case can be considered to be a step further towards ensuring that online service providers/
search engines cannot ignore the law and legal rights of a party by contesting their jurisdiction.
Internet is a global platform. Google has its headquarters in California, USA and the party which
was suffering harm is located in the state of British Columbia (Canada). D was operating out of an
unknown location. The courts had no other way of preventing the rights of a domestic party than
to grant an interlocutory injunction to Google and stop it from hosting the content that was
allegedly violated Es IP rights. This case proves that no matter how anonymous a person is, he is

12 https://globalfreedomofexpression.columbia.edu/cases/equustek-solutions-inc-v-jack-2/, Global Freedom of Expression,


Columbia University
still not above the law. It is important to appreciate this multi-territorial judgement because in
todays world, enormous amount of illegal activities take place online. If the courts also fail to
involve in this unrestricted network of internet, then it will be very difficult to control such illegal
activities, as they take place under the dark web. It was ultimately the balance of convenience that
favoured the granting of order against Google.

The fact that Canada is now home to some of the toughest anti-piracy rules in the world13 is in
itself a great honour for the Country, and a victory for the judicial system. However, it is highly
desirable in times like these, to have a central legislation or a treaty, that may be accepted by all
countries who face such irregularities, due to lack of jurisdiction or a codified law in place. Internet
is a fairly new concept as compared to our age-old laws. This step of the Supreme Court of Canada
is progressive towards being accepting towards global internet jurisdiction.

Considering all the above reasons, I believe that the Supreme Court of Canada has redefined
internet jurisdiction, reinstated the concept of law in, supposedly, the No-Law Land and
protected an entity from facing harm.

Bibliography

1. Michael Geist, Why Canada is Now Home to Some of the Toughest Anti-Piracy Rules in
the WorldAnd What Should Come Next, <http://www.michaelgeist.ca/2017/03/why-
canada-is-now-home-to-some-of-the-toughest-anti-piracy-rules-in-the-world-and-what-
should-come-next/> June 29, 2017
2. https://globalfreedomofexpression.columbia.edu/cases/equustek-solutions-inc-v-jack-2/,
Global Freedom of Expression, Columbia University
3. lose Gratton, <http://www.eloisegratton.com/blog/2017/07/05/%E2%80%8Bgoogle-
inc-v-equustek-solutions-inc-supreme-court-gives-the-green-light-to-global-orders-to-
take-down-search-results/> July 5, 2017

13Michael Geist, Why Canada is Now Home to Some of the Toughest Anti-Piracy Rules in the WorldAnd What Should Come
Next, <http://www.michaelgeist.ca/2017/03/why-canada-is-now-home-to-some-of-the-toughest-anti-piracy-rules-in-the-world-
and-what-should-come-next/>
4. Barry B. Sookman, <http://www.canadiantechlawblog.com/2017/06/29/worldwide-de-
indexing-order-against-google-upheld-by-supreme-court-of-canada/> , June 29th, 2017
5. Ariel Katz, <https://www.law.utoronto.ca/blog/faculty/google-v-equustek-unnecessarily-
hard-cases-make-unnecessarily-bad-law>, June 30, 2017
6. Norwich Pharmacal Co. v. Commissioners of Customs & Excise, [1974] A.C. 133 (H.L.)
7. Cartier International AG v. British Sky Broadcasting Ltd., [2017], 1 All E.R. 700 (C.A.)
8. <https://www.bennettjones.com/Publications/Updates/Norwich_Orders/>, August 11,
2011
9. RJRMacDonald Inc. v. Canada (Attorney General), [1994] 1 S.C.R. 311