At the Supreme Court of Canada, Google Inc. will be searching for a more favourable ruling than it got at the Court of Appeal for British Columbia in The appeal stems from the BC Supreme Court’s granting of an requiring Google to de-index certain websites from its search results. Google applied for to the Supreme Court on September 10, 2015 after the BC court dismissed Google’s appeal in June.

The BC Decisions

BC Supreme Court Justice Lauri Ann Fenlon sided with Equustek Solutions Inc. in the original 2014 decision in , issuing an injunction requiring Google to de-index Morgan Jack’s Datalink Technologies Gateways Inc. and Datalink Technologies Gateways LLC websites. Datalink had formerly been a distributor of Equustek’s industrial network hardware, but had relabelled Equustek’s products to sell as its own and had built and marketed online a competing product using illegally-obtained Equustek designs.

Google was not a party to the original action, and complied with the plaintiff’s request to voluntarily de-index 345 URLs associated with Jack’s now-virtual company (only on google.ca). However, Google did refuse to de-index the so-called “mother sites” or entire categories of URLs associated with the company. The plaintiffs that this was insufficient and that it led to an unsuccessful game of “whack-a-mole” wherein the defendants listed their product at new URLs faster than Google could de-index them. As a result, Equustek applied for and was granted the injunction requiring much more extensive de-indexing

(Google) Mapping Jurisdiction

While Google was not a party to the initial litigation, it launched the appeal to the Court of Appeal to contend that the extraterritorial interlocutory injunction granted by the lower court over-extended the court’s jurisdiction. Indeed, the issue of territorial competence was central to the appeal (which also included concerns of comity and freedom of expression). The parties agreed that the jurisdiction of the BC Supreme Court lay in s.3(e) of the which requires a real and substantial connection between British Columbia and the facts of the case.

Finding for the respondents, Justice Groberman stated (at paragraph 41), “The most important facts on which the injunction application is based–facts concerning the violation of trade secrets and of intellectual property rights–have a strong connection to the Province.”

Justice Groberman went on to hold that the Supreme Court Justice was correct in finding in personam jurisdiction over Google based on Google’s “doing business” in BC. The judge found Google’s active search function, advertising, and data collection (“Googlebot”) sufficient. By finding territorial competence over Google, the court is effectively allowing for more expansive powers to be exercised extraterritorially over Google.

Censorship or Justice?

Google unsurprisingly raises concerns at the breadth and implications of the BC courts’ findings of jurisdiction, but Justice Groberman is manifestly unsympathetic. According to the court, Google’s fears of being open to restrictive orders from other states’ courts (friendly or otherwise) derive from “the world-wide nature of Google’s business and not any defect in the law.”

It is probably true that de-indexing on the scale of “mother sites”, rather than mere URLs, is more effective as a remedy than playing “whack-a-mole” to fend off a virtual company’s infringement of (your) products. Nevertheless, it is hard to imagine that if the Supreme Court of Canada upholds the BC courts’ jurisdiction over an enormous global search engine – with a desktop search engine market share of nearly – it will not cause the floodgates to open for (at least attempts at) extraterritorial motions to be brought against Google and other similar companies. The question is, can motions such as this be limited in scope to dealing with internet links to companies that break the law, or will the decision be a precedent for more aggressive restrictions in other jurisdictions? Clearly appropriation of trade secrets is a crime, but in many places, so are much less clear-cut issues.

Google is by no means the only company with paid local advertising, active search functions, or data collection abilities. Nor is it the only site capable of listing links to potentially illegal activities. An action like this one is not limited to Google, and it is not limited to being issued by Canadian courts. As such, the decision raises fears in some corners that a door has been opened for courts to regulate speech outside their jurisdiction. As the (EFF) submitted in their , the injunction would likely infringe on the American constitutional right to free speech (which includes internet search results).

According to the EFF, the ruling “ The BC courts were not unaware of the issue, but relied on the limited temporal nature and ability to vary interlocutory orders as a safeguard to free speech. It will be up to the Supreme Court, if it chooses to back the lower courts, to emphasize the scope and limitations of such orders, especially when they concern extraterritorial requirements. It remains to be seen, then, if fighting counterfeit GW1000 networking devices opens the door to greater judicial control over the internet.

Sebastian Beck-Watt is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School

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At in Vancouver BC, Michael Hallatt resells marked-up and unmodified Trader Joe’s products purchased at retail price in Washington State Trader Joe’s locations. Currently, Trader Joe’s only operates in the United States and hold several registered trade-marks on . The mark is used to identify both the company itself, and its branded goods. Trader Joe’s also currently has two ��for retail grocery services in Canada.

In the��, Trader Joe’s alleged that Hallatt prominently displayed their mark in an attempt to pass as an authorized dealer of their products. Interestingly, in the wake of the trade-mark infringement claim made by Trader Joe’s, Hallat’s store now goes by _IRATE JOE’S with the tagline “Unauthorized, Unaffiliated and Unafraid”. On October 2^nd, a Seattle Washington court����the claim for lack of subject-matter jurisdiction, but allowed Trader Joe's to amend the claim under state laws.

Under Rule of the United States��Federal Rules of Civil Procedure,��a court can ��only if it is immaterial and appears to be made solely for the purpose of obtaining jurisdiction, or the claim is wholly immaterial or frivolous. In making this determination, the court unless the party mounting a jurisdictional challenge asserts facial or factual attacks on the claims. The court held that Hallatt failed to make a factual or facial attack but that nevertheless there was no basis for extra-territorial application of the ��in this case.

The Lanham Act confers broad power on the court to exert jurisdiction. To make this determination, courts must apply the .�� First, courts ask whether the actions complained of effect American foreign commerce. Second, whether this effect presents a cognizable injury under the Lanham Act. Third, the court must conduct a seven-factor analysis as to whether assertion of extra territorial authority is justifiable. To satisfy the first two parts of the test, a plaintiff must show only that there has been “some” effect on foreign commerce when construing all facts in their most favourable interpretation. In this case, all the alleged trade-mark infringement took place in Canada and there was no proof of economic harm in the United States.

Trader Joe’s failed to show an effect on American commerce that would warrant the application of the Lanham Act. ��The degree of conflict with foreign law or policy weighed against establishing jurisdiction because Trader Joe’s has two trade-mark applications in Canada and the infringement is wholly foreign. Hallatt’s permanent resident alien status and his frequent purchase trips to the US would likely be sufficient for establishing jurisdiction through the nationality factor. Third, Hallatt’s presence is not strong enough in the US to apply jurisdiction. Fourth, as wholly foreign acts, there was not a significant effect in the United States. (Even if there was some diversion of business or impact on the reputation of Trader Joe's, this factor still weighed against applying jurisdiction.) Fifth, Pirate Joe’s�� clearly purchased Trader Joe’s products at retail value to resell and it was unclear whether this was intended to harm Trader Joe's since it did not actually lose sales. As a result, it was was not necessarily foreseeable under the sixth factor that the actions would cause harm. Finally, the actions were clearly more significant in Canada than in the United States, since that is where the products were sold after being lawfully purchased in the US.��The court found that on the whole the seven factors supported not extending jurisdiction.

Until Trader Joe’s actually enters into the Canadian market they may have a difficult time preventing Hallat from selling their products at Pirate Joe's. To be successful in a claim in a Canadian court, Trader Joe’s would have to show actual use of the mark in Canada. Trader Joe's may have an argument that if their mark is displayed on a website accessed by Canadians it should be considered “used”��, though this has been a controversial point of law in recent times. (It is important to note that a mark displayed on a website is not�� “used” in Canada unless Canadians can����associated with the mark.) Currently, Trader Joe’s does not allow Canadians to purchase goods through their site and therefore may not pass the threshold for use in Canada. As time goes on, even with trade-mark applications, if the mark is not used ��in Canada the registration could be expunged. Moreover, with Pirate Joe's tagline "Unauthorized, Unaffiliated and Unafraid", I think it would be difficult to indicate consumer confusion in the face of such clear indications about the lack of association with Trader Joe's.

Despite the favourable ruling, Hallatt may still have difficulty stocking his shelves. Several Trader Joe's locations now , and Hallatt has already had to resort to sending others in to shop for him. ��That said, for the time being, fans of Pirate Joe’s can continue to sing “Yo ho ho and a bottle of all-natural apple juice!”

Allison McLean is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.��

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