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Public Opinion Pollster Glen P. Robbins Reasons in Google v Equustek Vol II (for S.C.C.)
  Sep 12, 2016

continued from Vol I:
51.09. (5)The trade-mark owner shall inform the Minister in writing, as soon as practicable, of any changes to(a) the validity of the registered trade-mark that is the subject of the request for assistance; (b) the ownership of the trade-mark; or(c) the goods for which the trade-mark is registered.
Jurisdiction of this case takes on a whole new meaning following review the Trademark Act (Canada) and tends to beg the follow up question: Given that the statement of defences were struck at the lower court, why didn't the plaintiff seek orders of default judgment for significant damages and orders for enforcement, and under the same application, seek to transport the orders achieved at provincial superior court level to the Federal Court jurisdiction, and from there seek the intervention of the minister responsible and law enforcement?
The is distinct differences involving the filing and legal implications for Trademarks in Canada and the United States. Under heading of “Classification Systems”: “Canada does not adhere to a classification system of goods and services.” 'As a consequence, an unlimited range of goods and services can be including in Canada without attracting government filing fees'. “Such is not the case in the U.S., where each class included in the application attracts a filing fee of $325 U.S. Filing fees in the U.S., can become prohibitive quickly.”
“When filing an application in Canada, the applicant must indicate whether the trademark has been used and, if so, provide a date of first use. When the trademark has been used, it is important to correctly file the application on the basis of use since the application cannot later be amended to claim use and can successfully be opposed by a third party on the ground that the application was improperly filed. Similarly, claiming a date of first use that is before the date of first use can also provide a valid ground of opposition.”
“In the United States, it is not improper to file an application on the basis of proposed use or intent to use when there has been use, and the application can simply be amended to claim use when the time comes to file a “Statement of Use.”
“In Canada, an application is filed based on valid use, no submission of specimen is required. In addition, said specimen is not required when filing a Declaration of Use.” This is not the case in the United States, where, an (sic) application predicated on use “must be accompanied with samples of use, as must a statement of use”.
“Divided Application”: “Once an application based on proposed use or intent to use has been allowed in Canada and the U.S., it will proceed to registration once a Declaration of Use (in Canada) or a Statement of Use (in the U.S.) has been filed.”
“Supplemental register”: “The U.S has been a Principle Registrar and a Supplemental Register”. “The Supplemental Registrar allows for the registration of makes that are considered to be descriptive”. Canada only has single Register, and descriptive marks are cannot be registered “unless the maker has acquired a certain level of distinctiveness in Canada”.
Madrid Protocol:
“The Madrid Protocol is (sic) an international multilateral agreement for the registration of trademarks. The United States (sic) is a signatory to this agreement, which permits U.S. Businesses and application to obtain trademark registration in over 80 countries around the world by filing a single application. Canada has not signed on to the Madrid Protocol. However, Canadian entities with U.S. , or other foreign subsidiaries may, in certain circumstances, avail themselves of the Madrid Protocol in foreign jurisdiction. [November 17, 2010, Genevieve M. Prevost of Canadian law firm Smart & Biggar, Canada's largest law firm practicing exclusively in intellectual property and technology law, with offices in Ottawa, Toronto, Montreal, Vancouver and Calgary.”
Injunctions from S.C.C.:
In “RJR-MacDonald Inc v Canada (Attorney General) Case Number(s) 23460, 2490” the issue before the court “involved “Interlocutory motions to stay implementation of regulations pending final decision on appeals and to delay implementation if appeals dismissed.”
“At issue here was whether the applications for relief from compliance with the Tobacco Products Control Regulations, amendment should be granted. A preliminary question was raised as to this Court's jurisdiction to grant the relief requested by the applicants.”
“At the first stage, an application for interlocutory relief in a Charter case must demonstrate a serious question to be tried. Whether the test has been satisfied should be determined by a motions judge on the basis of common sense and an extremely limited review of the case on the merits.”
“At the second stage the applicant is required to demonstrate that irreparable harm will result if the relief is not granted. 'Irreparable' refers to the nature of the harm rather than the magnitude. In Charter cases, even quantifiable loss relied upon by an applicant may be considered irreparable harm so long as it is unclear that such loss could be recovered at the time of a decision on the merits.”
“The third branch of the test, requiring an assessment of the balance of inconvenience to the parties, will normally determine the result in application involving charter rights. A consideration of the public interest must be taken into account in assessing the inconvenience which it is alleged will be suffered by both parties.”
“When the nature and declared purpose of legislation is to promote the public interest a motions court should not be concerned whether the legislation has in fact this effect. It must be assumed to do so.”
“In order to overcome the assumed benefit to the public interest arising from the continued application of the legislation, the applicant who relies on the public interest must demonstrate that the suspension of the legislation would itself provide a public benefit.” [freedom of speech would be the public benefit].
History: (Basic Principles of Injunction):
“During the 14th century, England had two distinct court systems known as the “Law Courts” and “Equity Courts”. The law of injunction is an equitable remedy; the party who seeks injunctive relief must come with clean hands.” The Judicial process operating “In Personam”, requires a person to whom the injunction is targeted to either do something or refrain from doing something. In Allen v Dingley, Choyce Cases 113, 21 Eng. Rep 70 (Ch 1576-1577): “Injunctions could extend beyond the parties to include their attorneys and counsellors. The latter could be enjoined from proceeding at law or enforcing a judgment and they could be held in contempt if they violated the injunction” (Author: Judge Srinivasa Rao).
(See also Robbins et al v Cambridge Mortgage et al (BCSC H130330) (S.C.C. 35772), Glen Robbins v Law Society (BCSC S111171) (S.C.C. 35302).
Other Rule of Injunctions: There must be breach of obligations or infringement of legal right. In the absence of irreparable loss, damages is the remedy.
Google's corporate 'presence' in Canada:
Google telephone contacts referenced for contact online in Canada provide a voice mail which is the same the one at head office. Head office in Mountainview, California is not able to provide a contact source which might provide insight as to corporate governance as this relates to Canadian content. It does however declare offices in Montreal, Toronto and another location in Ontario. These locations insofar as 'advertised' by Google are linked specifically to "" which differs from "".
Federal Court of Canada:
Would it not have been better advised for the plaintiff to seek Federal Court orders easily transported from “concurrent jurisdiction” of Provincial Court under the available (and proposed Default Judgment) and to include the offices as respondents in that matter and in service of the orders obtained?
Could substitutional service orders not been obtained at Federal Court under this scenario predicated on the fact that the Defendant's abandoned their obligation at BC Supreme Court and had their responses to civil claims struck as a consequence?
Google appeared to be working diligently and cooperating through its voluntary removal of hundreds links, insufficient to the satisfaction of the plaintiff. Why didn't the court take responsibility for drawing conclusions as to what was satisfactory or not? Are expert witnesses permitted to draw their own conclusions in reports offered to courts for examination?
If the Federal Court effected appropriate orders under our procedural design, the criminal implications associated with the federal statute could be brought to bear on the defendants. Taking this action would have harnessed the federal jurisdiction and the power of Parliament to influence American counterparts
Now, would be facing the minister of the country and the apparatus of diplomacy that that entails, as well as the border patrol and police investigation offered by the potential for export from a location in the United States to Canada?
Defendants would be facing the minister of the country and the apparatus of diplomacy that that entails, as well as the border patrol and police investigation offered by the potential for export from a location in the United States to Canada?
The BC Civil Rules relate to the parties to the action. Equustek is the plaintiff. “Google is an innocent party” according to the justices. This is not a criminal case. Google is not a party, and is an innocent person. A non party who is innocent has no business being placed at the center of a judicial proceeding. Common sense would tell us that.
The following BC Civil Rules which would normally apply in the commencement, prosecuting and defending a claim including Rules: 3-2 “Serving and Renewing the Notice of Claim”; 3-3 “Responding to a Notice of Civil Claim”; 3-4 “Counterclaims”; 3-5 “Third Party Claims”.
Part 4-3 “Personal Service” and @ subsection (j) and (k) of that Rule: 2(b) “on a corporation, (i) by leaving a copy of the document with the president, chair, mayor or other chief officer of the corporation”.
The injunction obtained would need to be originated under Rule 8-1 of the BC Civil Court Rules “How to bring and Respond to Applications”. Under “Definitions” and subrule (1) an “application respondent” “means a person who files an application response under subrule (9);”
Subsection 9 of the Rule 8-1 provisions states: “A person who is served with documents referred to in subrule (7) of this rule and who wishes to respond to the notice of application (in this subrule called the “responding person”) must do the following within 5 business days after service or, in the case of an application under Rule 9-7, within 8 business days after service (a) file an application response; (b) file the original of every affidavit, and of every other document, that (i) is to be referred to by the responding person at the hearing, and (ii) has not already been filed in the proceeding; (c) serve on the applicant 2 copies of the following, and on every other party of record one copy of the following: (i) a copy of the filed application response; (ii) a copy of each of the filed affidavits and documents, referred to in the application response under subrule (10) (b) (ii), that has not already been served on that person; (iii) if the application is brought is under Rule 9-7, any notice that the application respondent is required to give under Rule 9-7 (9).”
Subsection (9) of BC Civil Court Rule 9-7 “Summary Trial” states: “If a party intends,on summary trial application, to rely on (a) evidence taken on an examination for discovery, (b) answers to interrogatories, or (c) admissions, the party must give notice of that fact in accordance with subrule (10).” “Giving notice” (10) “Notice under subrule (9) must be given (a) by the applicant, in accordance with Rule 8-1 (7) and (8), and (b) by a party who is not an applicant, in accordance with Rule 8-1(9).”
Legal definition of submit to court: “The legal definition is generally described as “A yielding to authority”. “The submission may be the act of the parties simply, or through a medium of a court of law or equity.” “When it is made through the medium of the court, it is made a matter of record by rule of the court.” “The extent of the submission may be various, according to the pleasure of the parties, it may be of only one, or of all civil matters in dispute.”
Google representatives filed response to application documents and adduced evidence on the matter of the injunction. It is obvious that Google submitted to the court by participating its volunteer actions and it can fairly concluded that Google submitted to the BC court. The use of the provisions in the application.
It was therefore not necessary to go to the lengths taken to effect the injunction, on the basis of territorial competence under the very onerous (and we believe flimsy) ground offered by 3 (e).
Ex parte Applications:
In Anchor Packing v Grimshaw In the Court of Appeal of Maryland, No. 1519, September term, 1996
“Ex parte communication is a communication about a case that an adversary makes to the decision maker without notice to an affected party. A judicial proceeding, order, or injunction is said to be taken ex parte when it is taken or granted at the instance and to the benefit of one party only and without notice to or contested by, any person adversely affected.”
Justice Schulman of the Manitoba Court of Appeal in his reasons in “Dakota v Woods”...were ex parte relief is sought: “It is a well established principle of law that a party who seeks the extraordinary relief of an ex parte injunction must make full and frank disclosure of the case. The rationale of this rule is obvious. The judge hearing an ex parte motion and the absent party are literally at the mercy of the party seeking the injunctive relief. The ordinary checks and balances of the adversary system are not operating. The opposing party is deprived of the opportunity to challenge the facts and legal the moving party.”
According to Schulman J.A. “Some jurisdictions expand the definition (of ex parte) to include any proceeding that goes undefended even though proper notice has been given.”
We would agree with Schulman on this. Historically, courts do not like to provide injunctions ahead of determination of damages and when both are involved prefer damages to injunctions.
In this case Google asserts that it should be able to defend itself against Equustek in California. The Business Corporation Act grants a BC company the permit to do business elsewhere under its BC incorporation and to adhere to another jurisdiction for resolving disputes which may thus result.
Shouldn't this attitude in legislating powers and authority to BC Companies translate to those companies BC asserts are doing substantial business in this province? To point, shouldn't companies like Google have the right to be heard in the jurisdiction where they have head office particularly when Google isn't even a party to the action?
The Act also makes Directors and Officers of BC companies responsible for their actions.
The BC Civil Rules on matters of changing, adding parties does not permit a plaintiff to include a party as a third party, only the defendant can do it. It would appear that the judge has discretion to add or subtract any party or to place a party in position. The provisions under these Rules also recognize negligence of other parties.
Google declared to be “innocent” of any civil allegation must also be deemed to be not negligent, and even if residual apportionment of responsibility can be identified, (not easily done when the standard of full innocence is already determined), it must be concluded that Google could never have been added as party and no action for damages on merit of claim could have ever been produced.
The injunction given is well out of compliance fairness and justice as it unfairly draws a non party from outside jurisdiction into a dispute of persons and parties in a smaller jurisdiction. If every province or every state in every country permitted the type of judicial reasoning witnessed in Google v Equustek, search engines, necessary to the function and operation of the Worldwide Web would come under assault and lose the confidence of all of the other industries participating and earning revenues.
To be most succinct – dismissing this appeal could impact on the economic well beings of western nations. Every time a party felt mistreated by another, and a search engine or other In Rem business was involved, it could look to the Google case to have its way with an uncooperative defendant.
Defendant's are often uncooperative, parties don't like the role given to them and often put up a fight. One has to ask, how did the plaintiff's get so easily deceived, do the owners and the board of directors not accept some responsibility for the situation that got involved in?
Law, Public Policy and the Public Interest:
The perception from a position of assessing good law and public policy would be to say that generally speaking the public interest is never served well when an “innocent” party, in this case Google, is forced to do things by government entity, in this case a provincial superior court in a country where justices are politically appointed, from a province of over four million people ordering a search engine with hundreds of millions, billions of users.
It smacks a little of tyranny of the weak.
In scope of outcome relative to the objects of the court rule it seems ridiculous.
The ambition of the courts in taking a case as far as it has in Google, in my view has produced no more than a finding of sloppiness and arrogance, of drawing conclusions with proper basis of fact and law, and attempting a reach too far by procedural guile (at best). (Which I believe most right thinking reasonable Canadians would agree with).
Rule 3-5—Third Party Claims
Making a third party claim
(1) A party against whom relief is sought in an action may, if that party is not a plaintiff in the action, pursue a third party claim against any person if the party alleges that(a) the party is entitled to contribution or indemnity from the person in relation to any relief that is being sought against the party in the action, (b) the party is entitled to relief against the person and that relief relates to or is connected with the subject matter of the action, or(c) a question or issue between the party and the person(i) is substantially the same as a question or issue that relates to or is connected with(A) relief claimed in the action, or(B) the subject matter of the action, and(ii) should properly be determined in the action.
Plaintiff as defendant to counterclaim
(1.1) Subrule (1) does not preclude a plaintiff from pursuing a third party claim in his or her capacity as a defendant to a counterclaim. [en. B.C. Reg. 119/2010, Sch. A, s. 5 (a).]
Third party need not be party to original action
(2) A third party claim may be pursued against a person, whether or not that person is a party to the action.
Pursuing a third party claim
(3) Subject to subrule (4), a party wishing to pursue a third party claim referred to in subrule (1) must file a third party notice in Form 5 that accords with Rule 3-7.
When leave is required
(4) A party may file a third party notice (a) at any time with leave of the court, or (b) without leave of the court, within 42 days after being served with the notice of civil claim or counterclaim in which the relief referred to in subrule (1) is claimed.
Court may consider case plan order
(5) If the court makes an order under subrule (4) (a) in an action in which a case plan order has been made, the court may(a) consider if and to what extent the case plan order is appropriate given the third party notice, and(b) amend the case plan order, if necessary, for that purpose.
Application for leave
(6)Notice of an application for leave under subrule (4) (a) must be served on(a) the third party, and(b) all parties of record.
(7) Unless the court otherwise orders, a party who files a third party notice must, (a) within 60 days after the date on which the third party notice is filed, serve on the third party (i) a copy of the filed third party notice, and (ii) if the third party is not a party of record at the time of service, a copy of any filed pleading that has previously been served by any party to the action, and(b) promptly after the date on which the third party notice is filed, serve a copy of the filed third party notice on all parties of record.
Application to set aside third party notice
(8)At any time, on application, the court may set aside a third party notice.
Response to third party notice
(9)Subject to subrule (10), if a third party wishes to dispute the third party notice, the third party must(a) file a response to third party notice in Form 6 that accords with Rule 3-7, and(b) serve a copy of the filed response to third party notice on all parties of record.
When response to third party notice not required
(10) A third party who is a defendant in the action need not file or serve a response to third party notice and is deemed to deny the facts alleged in the third party notice and to rely on the facts pleaded in that party's response to civil claim if all of the following apply: (a) the third party notice contains no claim other than a claim for contribution or indemnity under the Negligence Act; (b) the third party has filed and served a response to civil claim to the plaintiff's notice of civil claim;(c) the third party intends, in defending against the third party notice, to rely on the facts set out in the third party's response to civil claim and on no other facts.
Application of rules
(11) Except to the extent that this rule otherwise provides, Rules 3-1 and 3-3 apply to a third party notice as if it were a notice of civil claim and to a response to third party notice as if it were a response to civil clai
Response to civil claim
(12) A third party who has filed a response to third party notice may, within the period for filing and serving a response to the third party notice, file and serve on all parties of record a response to civil claim to the plaintiff's notice of civil claim, raising any defence open to a defendant.
Application for directions
(13) A party affected by a third party procedure may apply to the court for directions.
Powers of court
(14) The court may impose terms on any third party procedure to limit or avoid any prejudice or unnecessary delay that might otherwise be suffered by a party as a result of that third party procedure.
Third party issues
(15) An issue between the party filing the third party notice and the third party may be tried at the time the court may direct.
Default of response to third party notice
(16) If a third party has not filed a response to third party notice and the time for filing the response to third party notice has expired, the party who filed the third party notice may apply for judgment in default of response to third party notice against the third party and notice of the application must be served on each other party of record. [en. B.C. Reg. 119/2010, Sch. A, s. 5 (a).]
Subsection (2) provision of section 3(5) “Third Party Claims” “Third party need not be party to original action”; (2) “A third party claim may be pursued against a person, whether or not that person is a party to the action”.
A plaintiff in any case in the BC Supreme Court brought under the BC Civil Rules, in this case Equustek, cannot bring a third party claim. The only explanation for this provision in the rules is that third parties may be implicated, why not just included them as defendants? The Defendant's could have brought the claim against Google. The Courts at both levels declare Google “innocent” which infers that even if the rules had permitted the plaintiff to include Google as third party to do so would have been without merit.
Essentially, what the lower court did, and the court of appeal enabled, was to claim Google as innocent to keep it out of the litigation as a party in order to protect against case precedent of damages which would cause a firestorm of potential litigation, and then pursue the injunction through the side window as it were. It smacks more of bad faith than it does the proper administration of justice.
Where is the spirit of comity in this sense?
By taking this action the BC Courts may have respecting its own rule but denied fellow jurisdictions rules to be properly considered, which would tend to contradict the power and authority which BC has granted to its own registered corporations. Are BC registered companies more special than American ones?
By including Google as defendant or third party, Google as it claimed, would have sought California or Delaware as the place of jurisdiction for the hearing, or alternatively had opportunity to battle the case on the merits, as no other court would have been likely to provide an injunction to Equustek, while Google was defending itself, without a decision on the merits of the case.
The plaintiff avoided including Google as party to the action, because apparently Google was innocent, there was no case to be made.
(17) On an application under subrule (16), the court may grant any or all of the relief claimed in the third party notice.
In terms of section 15 (5) of the Legal Professions Act, and the BC Civil Rules there is simply no procedural attachment to this case of the plaintiff to Google.

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