Supreme Court won’t upset France’s win in France.com trademark fight

A French flag flies at the Elysee Palace in Paris, France, November 28, 2016. REUTERS/Philippe Wojazer

(Reuters) – The U.S. Supreme Court on Monday let a victory for the French government stand after the former owner of the website France.com sued the country for trademark infringement and asked a Virginia court to give the domain name back to him.

The high court’s denial of France.com Inc’s petition for review leaves intact a March ruling by the 4th U.S. Circuit Court of Appeals finding that the French government was immune from the claims.

Jean-Noel Frydman, a U.S. citizen and French expat, bought France.com in 1994 and used it to sell French travel services. He incorporated France.com Inc in California and owned U.S. and EU trademarks covering the name.

Frydman’s company sued a Dutch company in Paris for infringing its trademarks, and the French government intervened, arguing it had the sole right to use the name “France” commercially.

A Paris court ruled for the government in 2015, and a French appeals court affirmed in 2017. An appeal to France’s highest court was still pending as of November.

France.com sued the French government in 2019 in Virginia federal court, bringing claims for cybersquatting, trademark infringement, and unfair competition, among others. The 4th Circuit ordered the lower court to dismiss the case earlier this year based on France’s sovereign immunity.

In its request for Supreme Court review, France.com argued that its lawsuit should be allowed under an exception to sovereign immunity for claims based on a country’s “commercial activity.”

The 4th Circuit had rejected France.com’s argument because the lawsuit was based on the French court judgment, not France’s commercial use of the website. France.com told the high court that the appeals court failed to analyze whether the “gravamen” of each of its claims was France’s commercial activity.

“If a trademark infringement suit can be divorced from the actual questions of how a trademark is used or misused,” the exception is “rendered meaningless,” France.com argued.

France.com’s attorney Benjamin Barlow said in an email that he and his client were disappointed in the decision but “understood the long odds.”

“The Fourth Circuit pushed foreign sovereign immunity past discernible bounds – and it will have to correct that in the future,” Barlow said.

The French government and its attorney John Griem didn’t immediately respond to a request for comment.

The case is France.com Inc v. French Republic, U.S. Supreme Court, No. 21-448.

For France.com: Benjamin Barlow of Dunlap Bennett & Ludwig, Alexander Chiulli of Barton Gilman

For the French government: John Griem of Carter Ledyard & Milburn, Zachary Cohen of Thompson McMullan

Read more:

4th Circuit rules for France in ‘France.com’ trademark dispute

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