Carter Ledyard & Milburn LLP represented the Republic of France and won a victory and reversal on appeal in late 2021 in the Fourth Circuit Court of Appeals, in a trademark and cybersquatting case brought by france.com. Recently, the highest court of appeals in France, the Cour de Cassation, upheld a central argument made in the US case: that the US courts should respect the decision of the courts in France that awarded ownership of the domain name “france.com” to the French State. The complex cross-border nature of this dispute underscored jurisdictional differences: a US court is unlikely to have awarded ownership of a domain name with a government or state name in it (like “newyork.com” or “USA.com” to the named government entity); and how IP cases brought in the United States courts against foreign governments can be impacted by the Foreign Sovereign Immunities Act.
The Cour de Cassation found trademark infringement and awarded “france.com” to the French State using two key legal tenets: (i) the name “France” is an element of identity for the French State and (ii) its use is likely to create confusion for the public.
The case has seen a journey that reached the Supreme Court of the United States, which declined to grant certioriari, leaving the Fourth Circuit’s dismissal in place.
The cross-border, multi-jurisdictional team was led by Carter Ledyard partner Jack Griem, and included Nick Tapert, Jeff Boxer, Ted McDonough and Madelyn White. Essential assistance and support was provided by Zachary D. Cohen, Director, and John Paul O’Herron, Associate, of Thomson McMullan (Virginia). Sébastien Pinot, Partner, and Alice Giovane, Associate, Bignon Lebray (France), coordinated communications with the French State and provided vital guidance on all matters relating to French procedures and law.