Google Inc v Equustek: de-indexing can be the next step in the fight against counterfeiting.

Earlier this week the Supreme Court of Canada issued its decision in Google Inc v Equustek and so opened the way for a new and scalable approach to enforcement.

The Supreme Court has upheld earlier lower court judgments and has required the search engine giant to de-index certain counterfeit websites entirely from its index.

Google’s mission statement is well known – its goal is “to organize the world’s information and make it universally accessible and useful”. What this case (and others in the data privacy context in Europe) has demonstrated is that this goal must have limits. Google can do more to ensure that the online world is not simply a lawless “wild west”. Instead, Google can help to make sure that everyone has access to information that is lawful but that entities who seek to profit from illegal activity are not given the same lifeblood.

The most significant aspect of this litigation is that the ruling is against Google as a non-infringing third party service provider, rather than a direct participant in the illegal activity. Google is very well placed to help to prevent unlawful activity by making sure that search results for the sites in question are not returned.

This is not the first-time that service providers have been required to do more – the Canadian court relied on an earlier landmark UK court case where Cartier owner Richemont obtained orders requiring Internet Service Providers (ISPs) – including Sky and BT – to block websites selling counterfeit goods.

What’s clear from both rulings is that, as IP infringement online escalates, third parties can be required to take action. It’s an important recognition that intermediaries such as Google are used – and indeed are often the primary pathway – to counterfeiters acting online.

The ruling has global effect. Site blocking is becoming common practice in jurisdictions, but by looking at third party actors such as search engines it may be possible to go much further in the effort to disrupt counterfeiters’ online activity. There is a large volume of websites out there engaged in counterfeit selling – you only have to look at the scale of actions being taken by rights owners to seize domain names and to freeze accounts to know this. These sites have a global customer base fed by global search engines. Now there is potential to require Google to act at scale and to remove these operations from their index.

This ruling is a first step and there is a lot to do to move this remedy into a scalable approach. We should push for a mechanism to give brands an easy and cost effective process to apply for this type of order to achieve the scaled removal of websites.

And the buck shouldn’t stop with search engines. Counterfeiters make great use of social media to attract a global market of consumers to their products. Social media platforms can also do more and this type of court case opens to the door to requiring this.

There is no doubt, this is very a significant court judgment that makes a clear statement to search engines and other third parties that are used by counterfeiters that they have a duty to help prevent wrongdoing online.

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