Canadian Lawyer InHouse

11 CANADIANLAWYERMAG.COM/INHOUSE NOVEMBER/DECEMBER 2015 By Jonathan Colombo and Tamara Céline Winegust Intellectual Property I n June 2015, the British Columbia Court of Appeal issued an injunction against Google, Inc., a U.S. company, requiring the world's leading search engine provider to de-index web pages offering counterfeits of Equustek's products from its search results not just in Canada but also worldwide. What's particularly interesting about the case is that Google was not a party to the case, and the injunction was that issued against it was not limited to its activities in Canada. The counterfeits at issue originated from some of Equustek's former distributors. After being found liable for passing off and other violations of Equustek's intellectual property rights in December 2012, those same distributors moved their business from a physical location in Vancouver, British Columbia, to the Internet, and used Google search results to direct potential customers to their new web sites. To stop customers from finding those web sites, Equustek sought an injunction against Google. In response, Google voluntarily de-indexed the offending web sites from its google.ca search results but not from search results generated using google.com or other Google gTLDs and ccTLDs. The matter returned to court and Google was ordered to de-index the offending web site pages on a worldwide basis. Google appealed. On appeal, Google argued inter alia that the BCCA lacked jurisdiction since Google is a U.S. company, does not have an office or employees or servers in British Columbia, is an innocent non-party, and that a worldwide injunction exceeded the court's jurisdic - tion. The court rejected all of Google's arguments. Of particular note were the court's holdings with respect to the potential scope for injunctive relief. First, the court held that while not the norm, orders against non-parties are routinely granted (e.g., subpoenas and summonses). Further, in the context of the Internet, Norwich Orders will be issued against non-parties requiring them to provide identifying information about potential defendants, and this type of injunction is critical in the case of Internet users who shield their contact information from the public. Second, the court held that provincial courts, as courts of inherent jurisdiction, have the authority to grant injunctions against non-parties where a justiciable issue exists and where the injunctive relief is required to ensure that orders already granted against the defendants are effective. Third, the court held that it had in personam jurisdic - tion over Google, since, while not a resident, Google carried on business in British Colum- bia in gathering data through web-crawling software, in dis- tributing targeted advertising to users in British Columbia, and in selling advertising to British Columbia businesses. The court then referred to a line of cases holding that where a court has in personam jurisdiction, orders may val - idly have effects outside Can- ada. While issues of comity and enforceability must be considered, they do not form an outright bar to issuing in- junctions that could affect the conduct of a non-Canadian resident. The facts in this case, involving defendants who were trying to circumvent an injunction, suggest that the holding in Equustek may not be applicable in other contexts. For instance, in at least one subsequent case, a court refused to apply Equustek where there were substantive rights at issue between the plaintiff and the non-parties, on the basis that doing so would allow the plaintiff to effect an outcome that is properly the subject of an independent action (Tangerine Financial Products Limited Partnership v. The Reeves Family Trust). That said, Equustek presents counsel with a potentially powerful tool where a defendant attempts to circumvent an injunction by moving its business outside Canada and seeking to hide behind web sites that are hosted by ISPs located outside Canada. In that type of case, an international border is not necessarily an obstacle to obtaining injunctive relief. IH Border, what border? The case for an injunction with worldwide effect. Jonathan Colombo is a Partner with Bereskin & Parr LLP. His practice covers all areas of trademark and copyright law. Tamara Céline Winegust is an associate with the firm and a member of the new media/copyright and trademarks practice group. '' '' What's particularly interesting about the case is that Google was not a party to the case, and the injunction that was issued against it was not limited to its activities in Canada.

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