ListedMag.com provided a summary of a potentially very important case that is currently before the Supreme Court of Canada in their “Now Heed This” column. Google is currently fighting a world-wide injunction against it which was ordered by a Canadian court. The injunction is to prevent Google from indexing and displaying an alleged counterfeiter’s websites to prevent it from promoting and selling the counterfeit goods.
In summary Equustek Solutions Inc., et al. are the plaintiffs (“Plaintiffs”). They manufacture and sell industrial network interface hardware. Morgan Jack, Datalink Technologies Gateways Inc. and Datalink Technologies Gateways LLC are the defendants (“Defendants”) and at one point distributed Plaintiff’s hardware. Plaintiffs allege that the Defendants subsequently started relabeling and redistributing the products as their own. Plaintiffs also allege that Defendants conspired to design and manufacture competing products using Plaintiff’s IP. Initially they were doing this Vancouver, BC but subsequently moved entirely on-line.
Plaintiffs initially won a series of interlocutory orders requiring Defendants to cease referencing Plaintiffs’ products on their website and publishing a notice that the products were in fact Plaintiff’s products. They also won an interlocutory order requiring Google to drop websites from their search index that referred to Defendant’s website. By March 2013 the statement of defence of all defendants were struck because they apparently abandoned their actions in April 2012 and ignored court orders. Throughout the process they moved their business entirely online and became illusive, did not attend court proceedings and did not respond to correspondence.
Google was not forced to remove the URLs by the Court. It voluntarily removed 345 URL’s from its index on Google.ca. Defendants were able to get around the de-indexing exercise by setting up new sites. Plaintiff’s described this as a game of “whack-a-mole.” Also given that many of the sales of Plaintiff’s products were outside of Canada, Plaintiff’s felt that removing URLs from Google.ca was not sufficient. Plaintiff’s returned to Court and were awarded an order which contained the following injunction:
“Within 14 days of the date of this judgment, Google Inc. is to cease indexing or referencing in search results on its internet search engines the websites listed in Schedule A, including all of the subpages and subdirectories of the listed websites, until the conclusion of the trial of this action or further order of this court.”
No one implies that Google is at fault or a party to the counterfeiting. The injunction was appealed by Google to the B.C. Supreme Court, and appellant court upheld the world-wide injunction.
Google has appealed the case to the Supreme Court of Canada. The basis of the appeals are whether the Court in B.C. has jurisdiction to impose a world-wide injunction on Google (a third-party).
While there are obvious concerns about the impact of something like this on civil liberties, it is at least indicative of the lower courts appetite to take a novel and forceful approach to dealing with a counterfeiter that won’t comply with an order of the Court.
This could have very wide spread implications for companies that are counterfeiting in Canada and using search engines to promote their goods. This is something we’re following closely.
For reference the case summary from the Supreme Court of Canada is here: http://www.scc-csc.ca/case-dossier/info/sum-som-eng.aspx?cas=36602
The docket is here: http://www.scc-csc.ca/case-dossier/info/dock-regi-eng.aspx?cas=36602. The Court has heard from a number of high profile intervenors.
The facts of the case are set out in the Court of Appeal for British Columbia: http://www.canlii.org/en/bc/bcca/doc/2015/2015bcca265/2015bcca265.html
Here is list of decisions from the courts leading to the Supreme Court of Canada: http://www.canlii.org/en/bc/bcca/doc/2015/2015bcca265/2015bcca265.html#showHeadnotes