The Equustek case is a significant intellectual property internet
infringement case from the Canadian Supreme Court (Google
Inc v Equustek Solutions Inc, Robert
Angus and Clarma Enterprises Inc, 2017 SCC 34). The rights-owner (Equustek (“E”)) was pursuing the infringer (Datalink (“D”)).
The issue
in the appeal was whether Google (a third party) could be ordered, pending a
trial, to globally de-index infringing websites of D, which D was using to breach
several court orders. This article is
confined to that aspect. (The infringement aspects are interesting of
themselves; the large number of third-party
intervener briefs are also pertinent.)
Webpage de-indexing ineffective
E is based in Canada and
manufactures networking devices. D was originally located in Canada but during
the case disappeared, moving to some unknown jurisdiction. Google asked E to
obtain a court order prohibiting D from carrying on business on the internet.
Google told E it would comply with such an order by removing specific webpages.
Google’s policy voluntarily de-indexes individual webpages, not entire
websites. E agreed to try this approach. However, the de-indexing of webpages
was ineffective as D moved objectionable content to new pages within its
websites, thus circumventing the court orders.
Google also limited de-indexing to google.ca searches.
Potential Canadian customers could find D’s websites even if they were blocked
on google.ca. Also, the majority of infringing sales were to purchasers outside
Canada, so Google’s de-indexing did not have “the necessary protective effect”
in the words of the Supreme Court.
E therefore successfully sought an injunction to
enjoin Google from displaying any part of the D websites on any of its search
results worldwide.
When
granting the worldwide injunction, Fenlon J noted that Google controls between
70-75% of the global internet searches and that D’s ability to sell its
counterfeit product is, in large part, contingent on Google’s search engine.
Only by preventing access to D’s websites, could E be protected.
Fenlon J concluded that irreparable harm was being facilitated through
Google’s search engine; that E had no alternative but to require Google to
de-index the websites; that Google would not be inconvenienced; and that, for
the order to be effective, the D websites had to be prevented from being
displayed on all of Google’s search results, not just google.ca. She said:
to be effective, even within Canada, Google must block search results on
all of its websites … [D’s] sales originate primarily in other countries, so
the Court’s process cannot be protected unless the injunction ensures that
searchers from any jurisdiction do not find [D’s] websites.
The Court
of Appeal dismissed Google’s appeal, agreeing the in personam jurisdiction
over Google and to make an order with extraterritorial effect; that courts of
inherent jurisdiction could grant equitable relief against non-parties; and
ordering Google was the only practical way to prevent D flouting the court’s
several orders, and since there were no identifiable countervailing comity or
freedom of expression concerns that would prevent the order, it upheld the order.
The
Supreme Court agreed that the test for the interlocutory injunction against
Google was met. Granting an interlocutory injunction is discretionary and
involves a high degree of deference. The Supreme Court saw no reason to
interfere with the courts below.
Google
did not dispute that there was a serious claim nor that E was suffering
irreparable harm from the infringements, and acknowledged that it inadvertently
facilitated the harm through its search engine which led purchasers to D’s
websites.
The lower courts concluded that as Google carried
on business in the province through its advertising and search operations, this
was sufficient to establish the existence of in personam and territorial
jurisdiction. Google did not challenge those findings. It challenged instead
the global reach of the resulting order, suggesting the order be limited to
Canada (or google.ca) alone. The Supreme Court said that this argument “contradicts
the existing jurisprudence”:
“When a court has in personam jurisdiction, and where it is
necessary to ensure the injunction’s effectiveness, it can grant an injunction
enjoining that person’s conduct anywhere in the world”. Mareva
injunctions are granted with worldwide effect.
Groberman
J. (at the initial appeal) “note[d] that the courts of many other jurisdictions
have found it necessary, in the context of orders against internet abuses, to
pronounce orders that have international effects.”
Fenlon J (at first instance) explained the worldwide order was
necessary: “The majority of [infringing] sales occur outside Canada …. to be
effective, even within Canada, Google must block search results on all of its
websites.”
To ensure
that Google did not facilitate D’s breach of court orders, the
injunction had to have worldwide effect.
The
Supreme Court agreed. “The problem in this case is occurring online and
globally. The internet has no borders – its natural habitat is global. The only
way to ensure that the interlocutory injunction attained its objective was to
have it apply where Google operates – globally.” The Supreme Court noted that the
majority of D’s sales take place outside Canada. If the injunction was restricted
to Canada or to google.ca, as Google suggested, “the remedy would be deprived
of its intended ability to prevent irreparable harm. Purchasers outside Canada
could easily continue purchasing from D’s websites, and Canadian purchasers
could easily find D’s websites even if those websites were de-indexed on
google.ca.” Google would be facilitating D’s breach of court’s order. “There is
no equity in ordering an interlocutory injunction which has no realistic
prospect of preventing irreparable harm”.
The order was targeting D’s websites being displayed where they did the
most harm, on Google’s global search results.
No significant disadvantage to Google
The injunction’s worldwide effect
did not tip the balance of convenience in Google’s favour. The order “does not
require … Google take any steps around the world, it requires it to take steps
only where its search engine is controlled. This is something Google has
acknowledged it can do – and does – with relative ease.” There was therefore,
the Supreme Court said, “no harm to Google which can be placed on its
‘inconvenience’ scale arising from the global reach of the order.”
The
Supreme Court did not see “how this interferes with what Google refers to as
its content neutral character.” The injunction did not require Google to
monitor content on the internet, nor was it a finding of liability against
Google for facilitating access to the impugned websites. As for the balance of
convenience, “the only obligation the interlocutory injunction creates is for
Google to de-index the D websites.” The Supreme Court also repeated that the order,
as Fenlon J observed, was “only a slight expansion on the removal of individual
URLs, which Google agreed to do voluntarily”.
Google
did not suggest that it would be inconvenienced materially or financially in
de-indexing. It acknowledges, fairly, that it can, and often does, exactly what
was being asked of it in this case, that was, alter search results. It does so
to avoid generating links to child pornography and websites containing “hate
speech.” It also complies with notices it receives under the US Digital Millennium Copyright Act to
de-index content that allegedly infringes copyright, and removes websites that
are subject to court orders.
Google search was how D has been able to continue harming E in breach of
several court orders. Google was the determinative player in allowing the harm
to occur. Any countervailing harm to Google was minimal to non-existent.
Third-country issues and freedom of expression
Regarding issues in other
jurisdictions, the Supreme Court said that “Google’s 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.” Previously, Fenlon J noted “Google acknowledges that most
countries will likely recognise intellectual property rights and view the
selling of pirated products as a legal wrong.”
The Supreme
Court did not see freedom of expression issues being engaged in “any” way that
tipped the balance of convenience towards Google in this case. Groberman J previously
concluded in the initial appeal:
In the case before us, there is no realistic assertion that the judge’s
order will offend the sensibilities of any other nation …. the order in this
case is an interlocutory one, and one that can be varied by the court. In the
unlikely event that any jurisdiction finds the order offensive to its core
values, an application could be made to the court to modify the order so as to
avoid the problem.
The
Supreme Court noted that if Google had evidence that complying with such an
injunction would require it to violate the laws of another jurisdiction,
including interfering with freedom of expression, it could apply to the courts
to vary the interlocutory order accordingly. “Google … made no such application.”
In the
absence of any evidence and given Google’s ability to seek an amended order, it
was not equitable to deny E the extraterritorial scope it needs to make the
remedy effective, “or even to put the onus on it to demonstrate, country
by country, where such an order is legally permissible.” “We are dealing with
the internet after all, and the balance of convenience test has to take full
account of its inevitable extraterritorial reach when injunctive relief is
being sought against an entity like Google.”
“This is
not an order to remove speech that, on its face, engages freedom of expression
value.” It was an order to de-index website listings that violated several
court orders. “We have not, to date, accepted that freedom of expression
requires the facilitation of the unlawful sale of goods.”
Even if the injunction engaged freedom of expression issues, “this is
far outweighed by the need to prevent the irreparable harm that would result
from Google’s facilitating D’s breach of court orders.”
Dissenting judgments
There were two minority
judgments. While these are not examined in this short note, they appear to take
a rigid procedural perspective, appear technologically dated in this author’s
perspective, and lean against there being an effective remedy rather than in
favour of Google per se.
Comment
This is a
significant judgment for intellectual property owners as it provides avenues
where there may be a particularly problems in terms of cooperation,
identification and location.
E first
had to engage a series of related orders on different occasions. Other
potential rightsowners might consider similar orders as may, or may not, be
appropriate.
While the
case relates to intellectual property, the benefit of de-indexing per se and
de-indexing on a worldwide basis is relevant to other areas beyond intellectual
property, e.g. fake news, personal medical records, other personal data, revenge
porn, data breach materials, hacked content. The discussion will continue, and internationally.
Indeed, since the Supreme
Court hearing, Google has announced that it will be de-listing personal medical
data, and various entities appear to be dealing with fake news. Service
providers and police authorities have also been looking more at revenge porn
issues and similar online abuse issues.
However,
the premise remains and is increasingly recognised that internet de-indexing is
an important and sometimes necessary avenue. In addition, this case highlights
the need in appropriate circumstances for a worldwide order for effect or
maximum protective effect. One issue the case does not address is that of
liability. Many will argue that this dovetails the predicted decision in Google Spain. Justifiably the headline infringement
de-indexing issue will take the limelight, but there are also other issues to
consider in the decision.
Dr Paul Lambert –
consultant (lex@mydistillex.com) and author
The Data Protection Officer: Profession,
Rules and Role (Routledge, Taylor & Francis).
