Google has lost another round in its fight to avoid a Canadian injunction requiring it to block an alleged trade secret pirate from its worldwide search results.   Although Google was not a party to the underlying action, a British Columbia court granted an interim injunction in 2014 requiring Google to block the recalcitrant and evasive pirate’s web sites from any Google search results.  

Google unsuccessfully appealed to the Supreme Court of Canada.  The Court commented that Google might apply to set aside the injunction if it could demonstrate that the compliance with the injunction would compel Google to violate the laws of another jurisdiction, including interfering with freedom of expression.

Google then secured an uncontested order from the U.S. District Court for the Northern District of California in December 2017 which appeared to hold that the injunction that had been confirmed by the Supreme Court of Canada should not be enforced.  See my previous post on that here.  Armed with that California decision, Google brought a motion in the British Columbia Supreme Court seeking to lift the injunction.

On April 16, 2018 the motion to lift the injunction was dismissed.  The Court pointed out that the California decision was uncontested, and that the injunction against Google did not require Google to break the law.  It merely restricted Google from a course of action.

The Equustek series of decisions opens the door to a form of remedy against evasive online pirates.   For example, the current state of the law in the US and Canada makes it very difficult to impose direct liability for patent infringement on online selling platforms such as eBay and Amazon.  See for example Blazer v. eBay, Inc. U.S. District Court for the Northern District of Alabama, 1:15-CV-01059, March 20, 2017 and Milo & Gabby LLC v. Amazon.com, Inc., 2016-1290 (Fed. Cir. May 23, 2017).   In contrast, Equustek now represents a certain willingness on the part of courts (at least Canadian ones) to compel important online players to interdict worldwide infringements in appropriate circumstances.  

The logic of Equustek is all the more compelling where the online player is actually involved in facilitating the infringing sale, unlike the case here with merely providing search results.     While the online platforms may not be directly liable for infringement, it appears that injunctive relief compelling them to avoid facilitating the infringement is now available, at least in Canada under sufficiently compelling circumstances.

By Paul Smith