Written by Dominique T. Hussey, L.E. Trent Horne and Jeilah Y. Chan
The Supreme Court of Canada recently confirmed the availability of a novel form of worldwide injunction whereby Google, a non-party to the litigation, was required to block worldwide access to websites operated by a defendant. The decision is welcomed by rights-holders in Canada as it provides an effective enforcement tool against infringing activities over the borderless internet. This week, Google filed a claim in California requesting a declaration that the Canadian order is unenforceable, effectively appealing an order of Canada’s highest court.
Trademarks, Trade Secrets, Copyright
In Google v. Equustek, the Supreme Court of Canada upheld an injunction with worldwide effect against Google, a non-party. The Court determined the injunction was the only way to stop an uncooperative defendant from using the internet to infringe the plaintiff’s intellectual property (IP) rights. Although the IP at issue was Canadian, the resultant injunction had global reach because the Supreme Court concluded the only way to ensure that the interlocutory injunction attained its objective was to have it apply where Google operates—globally. See our previous blog here.
Arguing for an injunction of global reach before the Supreme Court, counsel for Equustek submitted "[w]hether the order might be enforceable in the United States is a question for US courts and has nothing to do with this case." If that was an invitation for Google to put the question to a US court, Google accepted it.
This week, Google filed a claim in the United States District Court, Northern District of California for a declaration that the Canadian order is unenforceable as it offends the First Amendment to the United States Constitution and the Communications Decency Act.
On the constitutional ground, Google argues that internet search results are fully protected speech under the First Amendment, and that enforcement of the order would be a judicial restraint on free speech. Google emphasizes that the Datalink websites remain active, and that Equustek has not requested delisting injunctions against other search engines or remedies against domain registrars or webhosts, nor has it attempted to stop the sale of products through Amazon.
Google also asserts that compliance with the Canadian order offends the Communications Decency Act, which grants immunity to providers of interactive computer services for content created by others. Google claims that the Canadian order offends the Act because it forces Google to exclude material that third parties have posted online.
How the California court balances enforcement of foreign judicial orders with freedom of expression will be closely watched and will have application beyond IP, including to the 'right to be forgotten' legislation in Europe and other national laws obliging social media companies to remove illegal or offensive content.
More to follow as this case progresses. Stay tuned.
Equip is our platform for curated, key intellectual property cases. Delivered weekly, Equip distills the current substantive and procedural issues in Canadian IP litigation, equipping you with the key points for your business.