This is an informal case summary prepared for the purposes of facilitating exchange during the 2022 WIPO IP Judges Forum.
Session 5: Provisional Measures in IP Disputes (Part II)
Supreme Court of Canada [2017]: Google Inc. v Equustek Solutions Inc., 2017 SCC 34
Date of judgment: June 28, 2017
Issuing authority: Supreme Court of Canada
Level of the issuing authority: Final instance
Subject matter: Enforcement of IP and related laws
Plaintiff: Google Inc. (Appellant)
Defendant: Equustek Solutions Inc., Robert Angus and Clarma Enterprises Inc. (Respondents)
Keywords: Provisional measures, injunctions, non-party
Summary: Equustek is a small technology company in British Columbia that develops networking devices enabling industrial equipment manufactured by different companies to communicate. Equustek brought an action against its distributor for the unlawful use and sale of its intellectual property via the Internet. The British Columbia Supreme Court (BCSC) granted the company an interlocutory injunction against Google, a non-party to underlying action, to cease indexing or referencing certain search results on its Internet search engine.
The issue before the Court was whether Google could be ordered, pending trial of the action, to globally deindex websites of the distributor which, in breach of several court orders, was using those websites to unlawfully sell intellectual property of another company. A component of this was whether the BCSC had jurisdiction to grant an injunction with extraterritorial effect and, if so, whether it was just and equitable to do so.
The British Columbia Court of Appeal upheld the injunction. On further appeal to the Supreme Court of Canada (SCC), the SCC applied the established tripartite test for injunctive relief, and confirmed that this may be ordered against someone who is not a party to the underlying lawsuit. The injunction in this case flowed from the necessity of Google’s assistance to prevent the facilitation of the distributor’s ability to defy court orders and do irreparable harm to Equustek.
The SCC ruled that, where it is necessary to ensure the injunction’s effectiveness, a court can grant an injunction enjoining conduct anywhere in the world. If Google had evidence that complying with the injunction would require it to violate the laws of another jurisdiction, including interfering with freedom of expression, it was free to apply to the British Columbia courts to vary the interlocutory order accordingly.
Two dissenting judges held that the Google order in effect amounted to a final determination of the action, because it removed any potential benefit from proceeding to trial. The test for interlocutory injunctions did not apply to an order that was effectively final, and the Google order did not meet the test for a permanent injunction. Furthermore, the order was ineffective, cumbersome to administer, and alternative remedies were available.