When you visit the website france.com, you’ll be quickly redirected to the French government’s explore-France travel site: france.fr. But, the US-company France.com, Inc. believes that the country stole the .com site. The case is now pending before the Supreme Court on petition for writ of certiorari is France.com v. The French Republic, Docket No. 21-448 (Supreme Court 2021).
Jean-Noel Frydman registered the domain back in 1994 and began using it to operate his commercial tourism business. Frydman eventually registered the domain as a trademark — primarily in the travel related field. During that time the French National Tourist Office lauded Frydman’s work and and website.
In 2016, France.com was pursuing a private trademark claim in a French-based court. The French Government intervened in the lawsuit and was able to convince the French court to order the domain name to be transferred to the French Government. The petitioner here calls that decision “in contravention of and hostile to United States law.”
Subsequently, France.Com filed the present lawsuit in U.S. Federal Court seeking an order transferring the domain name back. Rather than delving into the merits, 4th Circuit ordered the case be dismissed. In particular, the district and appellate courts found the lawsuit barred by the Foreign Sovereign Immunities Act (FSIA). And, that the FSIA’s commercial activity exception to sovereign immunity did not apply. The petition for writ of certiorari focuses on that question:
Whether the United States Court of Appeals for the Fourth Circuit and other lower federal courts have misapplied this Court’s decision in OBB Personenverkeher v. Sachs, 577 U.S. 27 (2015), as allowing courts to determine the gravamen of Foreign Sovereign Immunities Act “commercial activity” exception suits without analyzing distinct claims presented.
[Petition.]
= = = =
§ 1604. Immunity of a foreign state from jurisdiction
Subject to existing international agreements to which the United States is a party at the time of enactment of this Act a foreign state shall be immune from the jurisdiction of the courts of the United States and of the States except as provided in sections 1605 to 1607 of this chapter.
§ 1605. General exceptions to the jurisdictional immunity of a foreign state
(a) A foreign state shall not be immune from the jurisdiction of courts of the United States or of the States in any case — (2) in which the action is based upon a commercial activity carried on in the United States by the foreign state; or upon an act performed in the United States in connection with a commercial activity of the foreign state elsewhere; or upon an act outside the territory of the United States in connection with a commercial activity of the foreign state elsewhere and that act causes a direct effect in the United States;
> The ‘Dot Com’ is for commercial — as in, business.
> The ‘Dot Gov’ is for governmental.
Wrong. The “.gov” top-level domain (TLD) is for governments of the United States. It was once only for the federal government, but state and local government entities in the U.S. now also use “.gov” names.
Government entities in France would not use “.gov” domains. That’s why “france.gov” to this day points nowhere. The appropriate top-level domain (TLD) for government agencies in France is “gouv.fr”
But more fundamentally, I agree with Paul, average people outside France–the target market for FRANCE.COM (a travel website run by Frysman)–may well have thought the domain was affiliated with the French government. When Frydman registered the domain in 1994, the Internet community was far more savvy than it is today and would have better understood the meaning of “.com” within the domain name. But we’ve had decades of dilution of meanings of the “.com” domain name, not only because of the explosion of new top level domains, but and widespread “.com” usage by non-profits, government-sponsored contractors, and all manner of non-commercial entities. As a result, many people in the public today associate “.com” as a generic component of any website URL.
… and no — see below
Yeah sorry it was a double post, this one got caught in the mysterious Dennis filter. I still don’t fully understand the shadow rules that Dennis uses to simply block certain posts.
No problem — they seem to change and are certainly not applied consistently (I have had direct cut-n-paste copies of other’s comments in a live stream get blocked because I was the one that (re)posted what the other person said.
Agree that FSIA is supposed to be an off ramp before a court weighs in on the merits – but the argument here is that the Court was presented with a trademark suit but believed that it could ignore the trademark claims when deciding whether the FSIA applied to them. Seems to be a pretty simple that in deciding whether FSIA applies to the claims in a lawsuit that a court actually has to look at the claims in the lawsuit.
I guess that was meant as a reply to me, right?
First, I should have said that I’m also not an FSIA-whisperer; it’s generally way beyond my paygrade.
But, from what I can tell by looking at the CA4 opinion, of which the merits portion isn’t that long, it’s not at all a “simple” conclusion that the nature of the claims—as opposed to the alleged underlying conduct—guides the FSIA analysis, at least for the “commercial activity” exception. According to the authorities cited by CA4, instead of the claims, it’s the factual allegations that control.
That makes some amount of sense to me too. For example, TM infringement, like what’s claimed here, can I think be fairly described as a “commercial tort.” And so, if the claim controls, then FSIA protection can be effectively neutralized in every case by the mere expedient of always including a TM infringement claim (unless obviously frivolous, of course)—regardless of the actual facts underlying the case.
I don’t think that’s correct. Just because someone alleged a commercial tort, it doesn’t mean the conduct on which it’s based actually amounted to “commercial activity.” The court still needs to examine the factual allegations to determine that in the first instance. I don’t see how it could realistically happen otherwise.
Nothing in the statute itself or the cited authorities seems to require favoring the claims to the exclusion of the underlying facts either. So I don’t think it’s fair to say CA4 “ignored” the claims when it wasn’t obligated to defer to them in the first instance.
In that case, how would one ever prosecute a trademark infringement claim against a foreign country – that is, if courts can look at the claims presented and the elements of those claims (expressly referred to in the Nelson and Sachs cases cited) and decide instead that the lawsuit is actually based upon something else. The Pablo Star case referred to in the petition (cert. denied) seems to say a copyright infringement claim against a foreign country can go forward because the act of infringement is the kind of behavior that non-sovereign entities engage in all the time … are we to believe that the only difference between this France case and that copyright case is that the court in the copyright case didn’t decide that the case was really about how the foreign government got access to copyrighted material?
Or to be clearer, if that court had decided that the way the government obtained the copyrighted material was not commercial, would they have been right to disregard and dismiss claims that the copyrighted material was being used without the right-holder’s permission? That seems shaky.
If I am understanding right – the Supreme Court has said that in order to determine whether an exception to FSIA applies you have to look at the claims presented and the elements which, if proven, would give a plaintiff a win under their theory of the case.
If looking at a plaintiff’s theory of the case does not mean you look at what a plaintiff actually claims and what elements they plead, then what does it mean?
As to the merits, trademarks are supposed to prevent public confusion as to the source or origin of the goods or services. France has a plausible argument that the average tourist would think that the France.com trademark was a French government service instead of a private company. After the recent Sup. Ct. “domain name as trademark” decision the two different matters seem even further confused?
That decision was on 30 June 2020. The U.S. Supreme Court held in U.S. Patent and Trademark Office v. Booking.com B.V. that “Booking.com” is eligible for trademark registration.
“France has a plausible argument that the average tourist would think that the France.com trademark was a French government service instead of a private company”
No. They do not.
The ‘Dot Com’ is for commercial — as in, business.
The ‘Dot Gov’ is for governmental.
“After the recent Sup. Ct. “domain name as trademark” decision the two different matters seem even further confused?”
LOL – tell me about it. EVERY single URL takes you to its SINGULAR location (that is the function of the URL, after all). It is the ultimate source identifier.
Big +1 anon.
France’s rights are not superior to Frydman’s. Not. Even. Close.
He was robbed. Blind.
Furthermore, anyone other than the country itself who owns a country.com had better be getting their law firm in place and ready to go.
p.s. And oh, lookie here — Chien continues to hide from the viewpoints and insights of others with her “I’d like to post but no comments please” articles. Sheesh.
“p.s. And oh, lookie here — Chien continues to hide from”
Well, don’t you know Pro Say that that is how the ‘new science’ works: those ‘in authority’ get to TELL YOU and you are simply not allowed to reply or question or anything.
Sure cuts out a lot of things like (gasp) rudeness.
Oh, and in case you missed my past references to Words Ought To Be Sharp, As They Are an Assault On the Unthinking…
/S
> The ‘Dot Com’ is for commercial — as in, business.
> The ‘Dot Gov’ is for governmental.
This is wrong. The “Dot Gov” top-level domain (TLD) is only for governments of the United States. It was once only for the federal government, but state and local government entities in the U.S. now also use Dot Gov names.
Government entities in France would not use Dot Gov domains. The appropriate TLD for government agencies in France is Gouv Dot Fr.
But more fundamentally, I agree with Paul, average people outside France–the target market for FRANCE.COM (a travel website run by Frysman)–may well have thought the domain was affiliated with the French government. When Frydman registered the domain in 1994, the Internet community was far more savvy than it is today and would have better understood the meaning of Dot Com within the domain name. But we’ve had decades of dilution of meanings of the Dot Com domain name, not only because of the explosion of new top level domains, but and widespread Dot Com usage by non-profits, government-sponsored contractors, and all manner of non-commercial entities. As a result, many people in the public today associate Dot Com as a generic component of any website URL.
Sorry LR, but your own correction clearly spells out the thrust of my point: the Dot Com is commercial and would have been easily recognized as such.
> Sorry LR, but your own correction clearly spells out the
> thrust of my point: the Dot Com is commercial and
> would have been easily recognized as such
Not really. I’d love to see survey data on this. Old timers like you and me who used in the 1990s easily understand that Dot Com means commercial (although tons of non-commercial sites today use Dot Com also), and I think your early experience is clouding your perspective. I would suspect that a significant portion of the Internet consuming public today doesn’t even know what the “Com” in Dot Com was even supposed to mean. Some people today think it means “Community” since all major social media websites use Dot Com domain names.
I’m actually surprised that the original registrant got away, for so long, with having a private Dot Com registration containing nothing more than the name of another country.
I would put to you that those who choose to muck things up and misuse the URLs (especially in the day and age of expanded choices) should not benefit by their errors.
That very expansion (recent vintage) also simply goes to the opposite of your attempted position, as the plethora of choices augments rather than diminishes what a choice stands for.
Apologies for the blown tag close out…
Hey there! As the original registrant, I have a few thoughts about this:
1. When I registered France.com in 1994, the .com extension was reserved solely for commercial entities. The French Republic (it’s the official name of the country, btw) couldn’t have registered the domain name. Therefore, the registration was totally legit.
2. There is nothing in French law that affords any kind of protection for the word ‘France’. Because of the France.com case there is the jurisprudence of the Appeals court, but nothing prior to that.
3. There’s never been a case brought to French courts about the use of the word France (until the France.com case) and there are more than 200,000 registered trademarks in France with the word ‘France’.
4. Even if the Appeals court decision stands, it can’t be retroactive, and cannot supersede a registration that was entirely legal at the time it was made, 25 years prior.
5. In any case, French law should not supersede US law when this is about a US asset, legally registered in the US, protected by a US Federal trademark. and belonging to a US company operating in the US ( and is itself owned by a US citizen).
5. What happened during the previous 25 years? I operated France.com as an online travel guide and online agency for US travelers to France. The website won accolades and awards given by the same Government Ministry and Agency who acted in concert to steal the domain name from me. Atout France (a Respondent at SCOTUS) even had me on their Advisory Board when they filed their initial lawsuit in Paris. All the while claiming in French courts that they ‘had never heard of France.com’!
6. It shouldn’t be a surprise that France.com was able to operate:. 1st: France, the country, has no right to the word France, and, 2nd: several French governments lauded our activities and considered us a partner in the common goal of the promotion of travel to France. If there is something surprising in this story, it’s how France got away (so far) having acted in clear violation of French and US law, in all impunity.
I’m no Tom Goldstein SCOTUS-whisperer, but the petition doesn’t look very promising. The QP seems to call for mere error correction. Moreover, the kind of argument you’d expect to see in a petition—here, that a circuit split exists—is buried at the very end.
That said, I do note that France is planning to respond. Also, it seems Frydman’s been getting some assistance from the Harvard Cyberlaw Clinic, at least previously, and the earlier iteration of the case was covered in the NYT, so maybe the petition will attract some amicus support and/or public interest.
Might be worth noting that domain name control is separate from trademark control and that the story has (at least) that additional wrinkle to it.
Not my area of law, but as a matter of first impression, it is interesting that a French court can force a domain transfer, but a US court is somehow precluded from forcing the domain transfer back. If only US courts had a fraction of the power French courts have!
If this were a suit just between private parties, that might well be the case, but there is a small issue of foreign sovereign immunity here. The whole point of sovereign immunity is that you’re not even going to reach the merits. If you had to evaluate the merits in each case before deciding if sovereign immunity would be allowed, then in effect you would render sovereign immunity a nonentity. Maybe as a policy matter that’s a preferable approach, but anyway it’s not how things are done currently.
>The whole point of sovereign immunity is that you’re not even going to reach the merits.
Or is the whole point is that the courts are not going to enforce a judgment against a sovereign?
And FWIW, the U.S. courts wouldn’t be forcing the French government to do anything here. It’s an in rem lawsuit against property “in the possession of” ICANN (an American nonprofit)
ICANN no longer even lists itself as a US entity, but instead lists itself as an international one.
See
link to icannwiki.org
Comments are closed.