Worldwide injunction against Google confirmed by BCCA

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is a litigation lawyer practicing at Perley-Robertson, Hill & McDougall LLP in Ottawa, Ontario. He may be reached at 613.566.2823 or obourns@perlaw.ca.

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On June 11th the British Columbia Court of Appeal released its decision in Equustek Solutions Inc. v. Google Inc. 1, wherein the Court confirmed the chambers judge’s motion decision granting a worldwide injunction against Google, a non party to the main action, that prohibits it from including specific websites in the results delivered by its search engines.

In the underlying litigation the plaintiffs, Equustek Solutions Inc. (ESI), alleged that the defendants, Datalink Technologies Gateways Inc. et al. (“Datalink”), designed and sold counterfeit versions of their product (an industrial network interface hardware).  ESI sued for trademark infringement and unlawful appropriation of trade secrets, and obtained injunctions prohibiting Datalink from carrying on their business.  Despite such injunctions Datalink simply continued to carry on business, but did so in a clandestine manner using a variety of websites, and relying on web search engines, primarily Google, to direct customers to those sites.

Since the initial injunctions were of no relief to the plaintiff (ESI) it approached the problem by seeking and securing the next best order, which was an injunction prohibiting Google from delivering search results pointing to Datalink’s websites.

Importantly, and as stated by the Court of Appeal;

Google is not a party to the underlying litigation, nor is it alleged to have acted unlawfully or in contravention of existing court orders. The injunction granted against it is ancillary relief designed to ensure that orders already granted against the defendants are effective.

Google appealed the chambers judge’s decision on four grounds (outlined below), which were all rejected by the B.C. Court of Appeal.

First, Google argued that “the injunction ought not to have been granted because the application did not have a sufficient connection to the Province to give the Supreme Court of British Columbia competence to deal with the matter”.  The issue was whether Google itself is substantially connected with British Columbia in a manner sufficient to allow the courts of British Columbia to assume in personam jurisdiction over it.

The Court quoted with approval the chamber judge’s reasons at length with respect to this issue. Google attempted to argue that such a connection was lacking because “some form of actual not virtual presence is required” and none existed.  Despite not having servers, offices or resident staff in B.C. Google was found to have a sufficient connection to the province because key parts of Google’s business occurred in B.C.:2

  • “Google’s internet search websites are not passive information sites. As a user begins to type a few letters or a word of their query, Google anticipates the request and offers a menu of suggested potential search queries. Those offerings are based on that particular user’s previous searches as well as the phrases or keywords most commonly queried by all users.” ; and
  • Google sells advertising to British Columbia clients… and “[a]lthough Google’s advertising business is marketed in Canada by Google Canada, British Columbia residents who wish to advertise on Google’s webpages contract directly with Google and make payments directly to Google.”

The Court of Appeal further held that the gathering of information through “proprietary web crawler software (“Googlebot”) takes place in British Columbia”.3

With respect to the request to remove search results, the Court held that this was squarely related to Google’s business activities occurring in British Columbia:4

[T]he business carried on in British Columbia is an integral part of Google’s overall operations. Its success as a search engine depends on collecting data from websites throughout the world (including British Columbia) and providing search results (accompanied by targeted advertising) throughout the world (including British Columbia). The business conducted in British Columbia, in short, is the same business as is targeted by the injunction.

Google submitted that if these reasons were sufficient then almost any jurisdiction could have jurisdiction over it. The Court was unsympathetic to this alleged problem, stating “a legal person such as a corporation can be subject to multiple jurisdictions whether because it is resident there through registration, or because it is carrying on business in that jurisdiction. Further, the territorial competence analysis would not give every state unlimited jurisdiction over Google; jurisdiction will be confined to issues closely associated with the forum in accordance with private international law”.5

Second, Google argued that “the injunction represents an inappropriate burden on an innocent non-party to the litigation”.

The Court of Appeal first explained that there are many instances in which the Courts make orders against non-parties, including for example; (a) Norwich orders; (b) subpoenas to witnesses, (c) summonses to jury duty, and (d) garnishing orders.  After some review of English law the Court held that with respect to granting injunctions there is great flexibility because “Canadian law has never endorsed the very strict limitations on the granting of injunctions” stated in the dicta of a 1986 English decision relied on by Google.  Rather the Court found that, “jurisdiction is, effectively unlimited” and that the limits on the availability of injunctions are “matters of practice rather than jurisdiction”.6  Further, the Court stated that Canadian courts have also “long recognized that injunctions aimed at maintaining order need not be directed solely to the parties to the litigation” and, lastly, “the granting of injunctive relief against third parties as an ancillary means of preserving the parties’ rights is a well-established jurisdiction of the Courts”.7

Third, Google argued that “the extraterritorial reach of the injunction is inappropriate and a violation of principles of comity”.

The Court flatly rejected Google’s submission that it did not have jurisdiction over non-residents.  In this case, the Court did have jurisdiction over Google on the basis that it does business in the Province of British Columbia and then held:8

Once it is accepted that a court has in personam jurisdiction over a person, the fact that its order may affect activities in other jurisdictions is not a bar to it making an order.

The Court stated that the analysis of whether it should make an order is whether “in taking jurisdiction over this matter, [have the] British Columbia courts failed to pay due respect to the right of other courts or nations”.  In this case the issue raised by Google was that “the injunction should not have been granted because of its effect on freedom of speech”.  The Court of Appeal agreed that courts “should be very cautious in making orders that might place limits on expression in another country”, in particular where there is a “realistic possibility that an order […] may offend another state’s core values”.  If it is possible that an order could offend another state’s core values then it should not be made.9

The Court of Appeal held that there was no chance that prohibit the defendants from advertising wares that violated the intellectual property rights of the plaintiffs would offend the core values of any country. 10

Therefore, it was held that, in accordance with the test for granting injunctions as set out in R.J.R.-Macdonald Inc. v. Canada (Attorney General ), [1994] 1 S.C.R. 311, the balance of convenience favoured maintaining the injunction granted. The Court upheld the chambers judge’s finding that “the injunction would not inconvenience Google in any material way, and that Google would not incur expense in complying with it”.11 Conversely, the injunction against Google was determined to be the only practical way for the defendants’ websites to be made inaccessible and it determined that an order over only google.ca would be inefficient.

  1. Equustek Solutions Inc. v. Google Inc., (2015) BCCA 265 (CanLII) hereinafter “Equustek v. Google
  2. Equustek v. Google at para 52
  3. Equustek v. Google at para 54
  4. Equustek v. Google at para 55
  5. Equustek v. Google at para 52
  6. Equustek v. Google at para 71
  7. Equustek v. Google at para 77 & 80
  8. Equustek v. Google at para 85
  9. Equustek v. Google at para 92
  10. Equustek v. Google at para 93
  11. Equustek v. Google at para 103
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