14 December 2021TrademarksMuireann Bolger

SCOTUS declines to review France’s trademark win

The French government remains protected by the principle of sovereign immunity from allegations of trademark infringement over a domain name after the US Supreme Court declined to revisit an earlier ruling.

SCOTUS delivered its decision on Monday, December 13, leaving intact the March ruling of the US Court of Appeals for the Fourth Circuit Court in the country’s favour.

The long-running dispute arose from Jean-Noël Frydman’s acquisition of the ‘’ domain name in 1994 for a California-based tourism company.

A US citizen and French ex-pat, Frydman claimed that he enjoyed a close relationship with the French tourism board, Atout France while promoting US travel to France.

But this changed when Frydman sued a Dutch company in the Tribunal de Grande Instance de Paris (Paris District Court) in 2014 for trademark infringement, and the French Republic and Atout France intervened, insisting that they alone held exclusive rights to the domain

Cultural identity

They contended that, according to French law, the name ‘France’ cannot be appropriated or used commercially by a private enterprise as that it infringes on its sovereignty.

They further asserted that ‘France’ expresses the country’s “geographic, historic, economic and cultural identity”.

The Paris district court ruled in Atout France’s favour, a decision that was later upheld on appeal.

Frydman proceeded to sue the French government at the US Court for the District Court for Virginia for cybersquatting and trademark infringement.

France moved to dismiss the case, asserting sovereign immunity under the Foreign Sovereign Immunities Act (FSIA). The district court ruled in Frydman’s favour, holding that entitlement to immunity “would be best raised after discovery has concluded”.

On appeal, the Fourth Circuit reversed the judgment of the district court and remanded the case with instructions to dismiss the complaint with prejudice.

The court held that France was immune from the claims according to a threshold set by the SCOTUS, and the Paris ruling.

A foreign ruling

“The corporation’s claims arise from an adverse judgment of a foreign court—in a proceeding initiated by the corporation itself—resulting in the transfer of the domain name, not any commercial activity that may have followed that transfer. Accordingly, the commercial activity exception to FSIA immunity does not apply,” said the court. appealed in a writ of  certiorari filed in September, arguing that the court of appeal misinterpreted the FSIA.

“In enacting the FSIA, Congress recognised that while the concerns of foreign states must be considered, citizens should not be barred from the courthouse door simply because alleged wrongdoers are sovereigns. As such, the FSIA includes exceptions for acts by sovereigns who expropriate US property or are engaged in commercial activity within the US,” argued the tourism company

It agreed that while sovereigns should generally be immune from suit when acting as sovereigns but when the sovereign acts as a traditional player in the market, their actions should face the same potential liabilities as any other actor.

Consequently, the French government should be exposed to trademark litigation due to its commercial activity in trying to encourage US citizens to visit France, the petition contended.

But these arguments failed to hold sway with SCOTUS this week, after it rejected the petition.

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