HAMMER TIME

How BC Courts “Hammered” Home their Jurisdictional Reach

Holding search engine providers accountable for the content they display has taken a giant step forward for businesses who suffer from other parties using such search engine providers to advertise infringing goods or services. In a recent British Columbia Court of Appeal judgement, Equustek Solutions Inc. v. Google Inc., 2015 BCCA 265, the Honourable Mr. Justice Groberman upheld the decision of the British Columbia Supreme Court ordering Google Inc. to remove entire websites from its search engines in various countries.

The plaintiff, Equustek Solutions Inc. et al., was the victim of trademark infringement and unlawful appropriation of trade secrets by its former distributor Morgan Jack et al., the defendant, which engaged in passing-off by way of re-labeling the products of Equustek Solutions Inc. with its own brand, and later by filling orders for the plaintiff’s products with their own competing product which was designed and manufactured using unlawfully acquired trade secrets and confidential information.

While court orders were in favour of Equustek Solutions Inc., the defendant failed to comply with such orders and instead hid behind the anonymity of the World Wide Web, continuing to sell its infringing products via various websites. The plaintiff then went on to successfully obtain an injunction against Google® (being a third party to the lawsuit) to remove websites used by the defendant. However, Google® only complied with the injunction by removing the contentious webpages within a website and only on its Canadian search engine Google.ca. The futileness of enforcing the court order based on Google’s® limited actions prompted a comparison by legal counsel to the plaintiff to the game of “Whack-A-Mole” whereby when Google® removed the contentious webpage the content would “spring-up” again as the defendant simply moved it to a new page within the same website.

In the end, the British Columbia Court of Appeal upheld the findings of the British Columbia Supreme Court, namely that the courts of British Columbia had jurisdiction to force Google® to “cease indexing or referencing in search results on its internet search engines the websites …including all of the subpages and subdirectors of the…websites…” of the defendants. This ruling, which provided an extraterritorial reach that in turn affected Google’s® activities in other jurisdictions, finally provides businesses with one big hammer to definitively whack that mole back into its hole.