Osler IP Lawyers Discuss IP Rights, National Borders and the Recent British Columbia Google Decision

J. Bradley White, Vincent M. de Grandpré

Oct, 2015

Tim May, an Intel engineer and author of The Crypto Anarchist Manifesto, once proclaimed, “National borders aren’t even speed bumps on the information superhighway.” Our digital vocabulary may have advanced since the early days of the Internet, but the concerns about jurisdictional borders—or the lack thereof—are still guaranteed to send lawyers scurrying.

In September, the Global IP resource, Managing Intellectual Property, published an article, in which Osler’s Bradley White, Vincent de Grandpré and Brad Jenkins discuss what the rise of the Internet and the scope for online presence has meant for jurisdictional borders when enforcing IP rights.

As the article points out, the growth of the Internet has given companies unprecedented opportunities to reach new customers in what has become a truly global marketplace.

But, on the dark side, pirates and counterfeiters have gone global. The problem is international, but the solutions are largely national. Sadly, IP laws, and the courts that administer them, are subject to jurisdictional limitations that do not exist for the law-breakers.

One solution, front and centre in a recent Canadian court decision involving Google, is effectively to ignore the border

Managing IP’s article explores the B.C. Court’s dismissal of an appeal from Google, forcing the world’s top search-engine provider to block results for the website of a clandestine company accused of violating trademarks. The case, which raises questions about the power courts can wield over the Internet, is believed to be the only one of its kind in Canada.

In short, Equustek Solutions Inc.—a Vancouver area company that sells industrial networking devices—filed a lawsuit against Datalink Technologies Gateways Inc., for relabeling its products and passing them off as its own…and unlawfully using confidential information to manufacture a competing product. Equustek sought to remove Datalink’s websites from Google’s search indexes. Google agreed to voluntarily remove 345 URLs, but would not agree to block the entire domain. The defendants then simply moved the offensive subject matter to new pages within their websites.

After a lengthy hearing, a judge of the BC Supreme Court ordered that Google cease indexing or referencing the websites listed in search results on its Internet search engines. Google appealed this decision, but the BC Court of Appeal ruled that Google had more than a passive presence in the province, and found that: The gathering of information through proprietary web crawler software (Googlebot) takes place in British Columbia. This active process of obtaining data that resides in the Province or is the property of individuals in British Columbia is a key part of Google’s business.

The implications of this finding are significant. Internet advertising has become an essential part of any company’s promotional efforts. Internet advertisements frequently use cookies to track a viewer’s online activities after leaving the site. Applying the Court of Appeal’s reasoning, collecting information about viewers in this way could potentially bring a company within the jurisdiction of Canadian courts.

There is a risk that Canadian courts will be used as a forum of convenience for parties seeking to limit a competitor’s online presence

READ THE FULL ARTICLE: Canadian Injunctions in the Age of the Internet [PDF]


Bradley White is an Osler partner and chair of the national IP department. He practises IP law with an emphasis on complex patent litigation and patent prosecution. He provides a number of clients with strategic advice on the enforcement of their patent rights, including the coordination and management of litigation strategies throughout multiple jurisdictions. He has appeared as lead counsel before the Federal Court of Appeal, the Federal Court and the Ontario Superior Court. Brad has received international recognition by: Best Lawyers in Canada 2015, Chambers Global; The World’s Leading Lawyers for Business 2015; Canadian Legal Lexpert Directory 2015; Benchmark Litigation Canada 2015; Managing Intellectual Property’s 2015 IP Stars; and, IAM Patent 1000 (2012-2015).

Vincent de Grandpré’s litigation practice focuses on IP matters, including complex pharmaceutical patent litigation. He advises and represents clients in the life sciences and pharmaceutical industries on regulatory and privacy issues. Vincent’s work has been recognised by: The Best Lawyers In Canada 2015; Chambers Global; The World’s Leading Lawyers for Business 2015; and, IAM Patent 1000 2015.

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