Courthouse Steps Oral Argument Teleforum: United States Patent and Trademark Office v. Booking.com

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Dean Reuter:  Welcome to Teleforum, a podcast of The Federalist Society's practice groups. I’m Dean Reuter, Vice President, General Counsel, and Director of Practice Groups at The Federalist Society. For exclusive access to live recordings of practice group teleforum calls, become a Federalist Society member today at fedsoc.org.

 

 

Micah Wallen:  Welcome to The Federalist Society’s Teleforum conference call. This afternoon’s topic is The Courthouse Steps Oral Argument Teleforum on United States Patent and Trademark Office v. Booking.com. This case was argued this morning and was actually the first case in history to have its oral argument televised live on C-SPAN. My name is Micah Wallen, and I’m the Assistant Director of Practice Groups at The Federalist Society.

 

      As always, please note that all expressions of opinion are those of the experts on today’s call.

 

Today we are fortunate to have with us Arthur Gollwitzer III, who is a partner at Michael, Best, and Friedrich. We also have Zvi Rosen, who is an adjunct professor of law at Southern Illinois University, School of Law. After our speakers have their opening remarks, we will then move to an audience Q&A. Thank you both for sharing with us today. Arthur, the floor is yours.

 

Arthur Gollwitzer:   Thank you. Thanks for joining us. It was interesting to listen to a live audio-simulcast of an oral argument this morning. It was a little bit of history in the making for Supreme Court nerds. I’ll give you a little bit of procedural background before we kick this off. The Booking.com sought to register the term “booking.com” as a trademark. As one might expect, trademark practitioners are not surprised to hear, the examiner at the Trademark Office said, no. Booking.com took the next step and went to the TTAB where the answer was also, unsurprisingly, no. Booking.com then took the matter to federal district court in the Eastern District of Virginia rather than appealing. It did so because it -- I can only guess as to why, but it seems as though it wanted to bolster the record; present a survey in support of its position, which it did; and ultimately convinced the district court that Booking.com was registerable, that it was descriptive and not generic and that the survey demonstrated that it had a requisite distinctiveness.

 

At that point, the Trademark Office of the U.S. government appealed to the Fourth Circuit Court of Appeals and the Fourth Circuit affirmed the district court’s ruling on a number of fronts. That lead us to today’s oral argument where the Supreme Court certified the question, Is there a per se rule that you cannot register as a trademark a phrase like “booking” or a term like “booking” that’s generic, in conjunction with a top-level domain like .com. That was the question for the Court this morning. We heard oral argument, and with that I will hand this over to Zvi to give some background on the Supreme Court’s precedence and how we got here today.

 

Zvi Rosen:  Thanks, Art. The case is kind of interesting to those of us who get nerdy about Supreme Court history because it really involves, partially, a question, whether we should still be following an 1888 case, either called the Goodyear case, or the full title of that case is Goodyear’s India Rubber Glove Manufacturing Company v. Goodyear Rubber Company. This comes from a really different time in how trademarks worked in America. The Goodyear case was decided nine years after the Supreme Court had held the entire trademark code unconstitutional in 1879 with trademark cases. There were actually still a lot of doubts about whether a federal trademark law was even constitutional. In fact, the Goodyear case only started three years after the trademark cases.

 

This case comes from a time that’s very different from now, in terms of how trademarks were regulated by the law. Us trademark lawyers are usually seeing five possible types of trademarks. You can have a generic trademark, which is really a good way to describe the product, very descriptive of a product and not where it’s from; a descriptive mark, which describes a product, but can also indicate source; a suggestive mark which suggests what the product is, but also is descriptive of source inherently; and then arbitrary or fanciful marks which are inherently descriptive of source. That’s how it is now.

 

Back in 1888 you couldn’t get a trademark for descriptive marks at all. Federal trademark law only recognized inherently distinctive marks. The case was actually about the Goodyear rubber patent was in 1847, and the Rubber Glove Manufacturing Company had been a patent licensee back in the day and wanted to branch out. They basically tried to copy the name of the main Goodyear Rubber company. The main Goodyear Rubber Company sued and basically tried to enjoin them from changing the corporate name to The Goodyear Rubber Manufacturing Company. It’s actually technically not a trademark case at all. It’s a case about what was called then unfair trading, now called unfair competition.

 

The Court did have some language in there that’s really important. With this 1888, that’s a Justice Field opinion, where he said that, “Names that are descriptive of a class of goods cannot be exclusively appropriated by anyone, and the addition of the word company only indicates that a company has been formed.” You can’t have a monopoly on the word “wine” for wine, and if you call yourself “Wine Company”, it doesn’t do anything for you.

 

That language in the Goodyear case is essentially what’s at issue today. Everyone agrees you can’t trademark “booking”, but the question is can you trademark “booking.com”. The Goodyear case has remained the law for a long time, even though the trademark law has changed dramatically. The Lanham Act allowed you to trademark descriptive marks which was a huge shift from where the law was under the Goodyear case, provided you can show the required what we used to called secondary meaning and now we call prior distinctiveness.

 

There have been a couple of more recent cases. There was some discussion of the Kellogg case. The Kellogg case was about whether or not shredded wheat is generic for what we call Shredded Wheat. The Supreme Court said it was. In 1982, the Ninth Circuit cancelled the Monopoly trademark that was for Monopoly the game, and they said that it was descriptive of a product and not a producer, and therefore, it was generic for the game. In response Congress changed the law and said—this is the ’84 revision to the trademark law—that when looking at cancellation of a mark, you have to look at whether or not it’s a primary significance of a mark to consumers is to be the product or a producer. If the primary significance is the producer, it may still be a valid trademark. With that, I’m going to hand it back over to Art and we’ll have a back and forth a little bit about the argument.

 

Arthur Gollwitzer:  Sure. Well, the Court kicked off right away with the Goodyear decision. Maybe I should even explain how the Court did this this morning for a second, since there was no live oral argument; the litigants weren’t there. The Chief Justice started, and as far as I could tell, they just had pre-arranged questions by seniority or he had some cue from his colleague as to when they were ready, so we just started with Chief Justice Roberts and went down the line. He started right away with Goodyear and whether or not Goodyear was good law in light of both its age and the fact that it predates passage of the Lanham Act, which as we know is our main body of our trademark law today.

 

      That leads to Goodyear. I think most of the Court was skeptical of Goodyear to some degree because of both the length of time, because the Lanham Act came after Goodyear, and simply because the dot-com world is -- not new to us anymore, but new relative to the Goodyear decision. That discussion seems to reflect, I think, something that’s been going on in the law for two decades now, or more, which is, does the internet change everything or can we just look back at our fundamental principles and extrapolate them, scale them, as the tech people would say, to the internet?

 

In questioning Goodyear, a number of the Justices asked, “Well, how do we decide? How does the Trademark Office decide what is registerable and what isn’t?” The Booking.com attorney focused on the primary significance test and as she did, or as Booking, her client, did in this case, they used a survey to demonstrate to a district court that in the eyes of the consumer the primary significance of Booking.com was to identify source as opposed to a genus or a category of goods.

 

      The government seemed to vary between sticking with a per se rule that there can be no registration, or hardly ever any registration, for a term like “booking” added onto a top-level domain, and maybe allowing for very rare exceptions. I think Justice Kagan came out and said, “If per se is a bridge too far”—I think that was her phrase—“what’s the test?” In her final reply argument, the government attorney said, “Well, it’s primary significance with Goodyear guardrails.” I’ll just say a couple more words on this, then shoot it back over to Zvi. How this plays out in the real world seemed to be on the forefront of everyone’s mind.

 

The Booking.com attorney made the point and said, “Look. The Patents and Trademark Office has been dealing with this now for 20 years. They’ve got it.” She kept citing her brief and her appendix showing the numerous attempted and failed registrations of dot-coms. I think the undercurrent is if we lose a Goodyear guardrail, or we don’t have something that is darn close to a per se test, does that change over time? Does the Trademark Office start allowing all these registrations or do -- even if the Trademark Office says, no, do well-funded litigants take their cases to the district court, like Booking.com did, get a survey, and use that survey to survive the primary significance test, and get their mark? In fact, if I can remember exactly which Justice it was, but someone pointed out, “Well, won’t trademark registration then become just another domain name registry?” Then it gets the slippery slope that a number of the Justices were concerned about. Certainly the government doesn’t want to risk going that direction.

 

Zvi Rosen:  Well, that’s interesting. Just to play devil’s advocate for a minute, I’d imagine that a lot of the -- I mean, why would it be so terrible if the PTO is a domain registry to a degree? I mean, I assume there’s a lot of domains there already. We talked about all the ones that are generic. I’m sure there’s tons of trademarks that are at the PTO where if you can get a trademark for the underlying word, there’s no reason you shouldn’t be able to get a trademark for .com with it as well. Why would it be so terrible?

 

Arthur Gollwitzer:  Well, I don’t think the government would have disagreed with that. In fact, I think that question was raised. The government wasn’t arguing that the dot-coms, per se, aren’t registrable. If a generic term, like “booking” that is not turned into a registerable mark simply by tacking on a top-level domain. The government gave examples of a number of -- I think she cited her own brief where there’s a number of registered marks involving more distinctive names standing alone.

 

The issue, like Goodyear, is simply adding “company” or “inc.” or your .com isn’t enough. It was Justice Kavanaugh who mentioned the Trademark Office turning into just another domain name registry. To answer your question, the first part is, there’s a distinction between saying, “Nothing with .com can be registered” and a narrower point which is “.com doesn’t turn a generic term into a registerable mark.”

 

The policy side of this also -- I think Booking.com takes your position, right? What’s the harm? There’s other checks and balances out there. These marks might be weak. A party might be reluctant to litigate them. There may be fair use defenses for descriptive use of a registered mark. A number of the Justices seemed concerned that that’s not a great set of checks and balances. If you let everyone register, if you say the trademark registration is almost a supplemental domain name registry -- litigation’s expensive. If litigation is the only check and balance, does that favor large companies, well-funded registrants who then, with the threat of litigation, even if they have a weak case, will chill competition by scaring away those who are second to the marketplace? Concern about chilling; overcrowding or crowding out, monopolization, and chilling seemed to be on the minds of, I’d say, almost every one of the Justices to some degree.

 

Zvi Rosen:  It’s an interesting question, of course. You then get the questions about fee shifting and exceptional cases and all that. I think it’s interesting. In theory fair use should be a pretty good guardrail on this. Fair use and trademark law basically looks at whether your use of the mark is either a non-trademark use, in other words using it to identify the source of goods, or you’re using it to identify good properly as someone else’s? In theory, assuming that a person has the trademark for a domain actually has the domain—I imagine it might cause all sorts of problems if it didn’t—in theory, that would be a guardrail. It is an interesting point as to how the cost of litigation, attorney’s fees, work with that. I don’t really have a clear answer there.

 

Arthur Gollwitzer:  No. I can anecdotally, as a practicing litigator, I often have clients who say, “Not only do I want to win, I want the other side to pay my fees.” We often are in the position of explaining the American rule and how, even in trademark cases and patent cases, the threat of attorney fees is not a very strong one. It would be interesting to do a study and find the empirical data, but anecdotally, I don’t feel like it’s very strong. On the flip side, the cost of hiring a law firm and a lawyer to defend against that infringement case is enough where I think there’s a real danger that you deter competition. In fact, I think Justice Gorsuch hinted at that in one of his questions. I think the government possibly could have done even more with that point. It was on the minds of several of the Justices.

 

Zvi Rosen:   Of course, this was a really interesting argument. Not least it’s the first argument ever livestreamed, but one of the very few cases where Justice Thomas has spoken. I actually don’t know when the last time was. I’m sure someone knows exactly. One of his questions was one that I think is lurking here that if “generic.com” is not okay, why is “1-800-generic” okay? I thought the government sort of hemmed and hawed and said, “Well, the Federal Circuit allows it, but we’re not sure.” It’s sort of an interesting question. That’s pretty well established by now, I feel. I think you probably have a lot of trademarks with the 1-800 or 1-866 prefix. I’m curious how this decision intersects with that.

 

Arthur Gollwitzer:   Yeah. I agree with you. I didn’t feel like the government had a great answer. It was a good question, and the government didn’t seem to have a strong answer. I couldn’t tell if Justice Thomas had an answer to his own question in mind and the government missed an opportunity to drive that home because he posed -- like most of the Justices, he turned around and posed questions right back at the Booking.com attorney when it was her turn and questioned her reliance on the primary significance test. I’m not sure where he was going with that, but I agree. The government didn’t have a strong answer. I mean, it’s a practical answer, maybe this is why. Maybe the government wanted to say or anyone listening here might be thinking is, well, is an 800 number as crucial to a business’s success as their internet address?

 

Sitting here in the year 2020 it’s probably hard for some of us to remember what commerce was like in the early ‘90s and before. There’s probably plenty of people who weren’t even adults at that time. I’m old enough to remember it, but I’m having a hard time imagining how critical that 800 number was. Today, I think, you sit and think, “Well, there’s no way that’s as limiting or gives someone as much of a monopoly or as much of a competitive advantage as having both the .com domain and then the trademark rights to try to exclude anyone who’s even confusingly similar. My sense is that’s the answer the government wanted to give and just didn’t have firm footing to give it. I don't know how you feel about that.

 

Zvi Rosen:  Yeah. Well, it’s kind of funny. I teach the 555-1212 case every year in trademark law. Every time, not a single student has any idea what 555-1212 ever was for directory assistance. That’s just what it is.

 

Arthur Gollwitzer:  It reminded me of a Tweet I saw the other day where someone was joking that nobody remembers that you used to be able to call a phone number to get the correct time.

 

Zvi Rosen:  Yeah. That’s right, which is sort of a thing, though. Someone mentioned in the briefings that the .com is increasingly less relevant, and the name on social media becomes more important. Perhaps having Booking on Twitter is more important than having Booking.com, probably not yet, but it feels like it’s moving in that direction.

 

Arthur Gollwitzer:  It might, or on Facebook. If you don’t care about the Booking.com, you care about excluding anyone confusingly similar to Booking. Doesn’t that support the government’s case as I think about this aloud? If Booking.com is allowed to register, and I have a business just called Booking, you’d never be able to register that in the past. It’s just almost assuredly be rejected as generic. I want to promote my business on Facebook, and Booking.com comes along and sues me or sends me a cease and desist letter because it never could have registered Booking either, but it got the registration because of the .com suffix which, as we’re suggesting, maybe down the road doesn’t even matter, and yet it’s going to exclude my business from using my business chosen name on Facebook. That could cut in the government’s favor if the transition to other forms of social media is the primary driver.

 

Zvi Rosen:  Yeah. In a way, a blue check on Twitter is very different from trademark registration. You probably can’t enforce that if someone tries to squat you or push you out on these platforms if you prefer the generic name like this. -- [Crosstalk 21:38]

 

Arthur Gollwitzer:  But if you get it registered...

 

Zvi Rosen:  Yes. Of course.

 

[Laughter 16:03]

 

Arthur Gollwitzer:  So a couple of things that jumped out at me. There’s a line of questions that came from the Booking.com’s attorneys. Booking.com’s attorneys focused on how the PTO is doing a good job with this. We don’t need a per se rule she seemed to be saying. We don’t need Goodyear. Primary significance test works. It’s all good. Let’s just go forward, seemed to be what she was saying. In fact, she was asked a couple times about crowding out and I was taken aback because at one point she said the concept of crowding out was silly when several of the Justices have used that phrase. Saying it’s silly seems to presuppose that nothing changes if Booking.com wins the case, which is, I think, the scenario I think she was trying to paint.

 

I’m not so sure that’s true. It seems like some of the Justices may also have had concerns because, again, the government picked up on this and said, “Well, it’s primary significance with Goodyear guardrails.” If we take the guardrails away, does the guidance—does the PTO handle things differently? Does the internal guidance change? Do more examiners approve more things, or do well-funded applicants just, when they really want it, take it to the district court, get the Teflon survey, and convince a district court that they can get their registration?

 

Now, the Booking.com attorney said in effect that the Justices made fun of survey at one point, but then said that even though 70-some percent of people recognized Booking.com as a source as opposed to a category, even 30 percent mistakenly believed that, I think it was washingmachines.com, was a source. Justices, while the Booking.com gave a bit of an explanation of how a Teflon survey works, the Justices said, I think their point was, “Well, there’s an inherent bias in these surveys when dealing with the internet, that consumers are sophisticated enough to understand that if you have a .com domain name you’re a business. These surveys are going to be biased. Again, the Booking.com attorney pushed back. She said that there’s experts in the field. There’s academic pieces that suggest that’s not true. The Justices seemed concerned, and all this plays into this big picture of, where does the world go? Without the guardrails do we go down essentially a slippery slope again towards being a domain name registry instead of a trademark office?

 

Zvi Rosen:  I think that it’s interesting. I feel like I’m blanking on the case, but there’s a paper by Barton Beebe and Jeanne Fromer, it was in the Harvard Law Review I believe, called Are We Running Out of Trademarks: An Empirical Study of Trademark Depletion and Congestion where they go into this concern. They raise some concern about we are running out of trademarks now. That’s what some of the Justices seemed to be echoing. I feel like I’ve seen this argument before. I forget the case, but I recall it being mentioned. I think they’re concerned about it even if PTO isn’t, or rather even if Booking isn’t.

 

I do think that there is a concern in their minds, I think that article they mentioned and such. Yeah. I think that I just thought the exchange between the lawyer for Booking and Justice Gorsuch was really interesting. It got a little testy at times I felt, talking about Teflon survey. Booking was holding it out as the gold standard. It pretty much is, I guess, in how these things are done. The Court was much more skeptical of the methodology which could be interesting down the road. My suspicion is I don’t think Goodyear is good law—go ahead. I’ll let you respond to that.  

 

Arthur Gollwitzer:  Let me respond to that and then maybe let you conclude, and if we’re ready for questions. It did get a little bit testy. I thought along with referring to crowding out as being silly, and she was a little short with the Justices as a whole as she implied the thought that they didn’t appreciate the science behind the survey. Then she made the substantive argument that consumers will focus on the -- when the marks are similar, she took this sort of as an a priori truth that when you have similar marks, consumers inherently hone in on the details. Maybe that’s right, but her client is Booking.com. If someone comes along and wants to be Bookings with an “s” .com, in the real world, is her client that comfortable with that?

 

Is her client really that sure that the consumers are going to know the difference between Booking and Bookings? If they are, maybe they are at first. Maybe the thought is, “Hey. We were the first mover. We’re big player in the market. Who cares about this new Bookings.com? We won’t sue them with our federally registered mark because it’s going to be our mark is weak, our protection’s thin. We’ll leave it alone.”

 

Okay, but let’s say Bookings.com starts to beat them in the marketplace. Let’s say Bookings.com has a better website, better algorithms, a better model. Then Bookings.com goes to register. Is Booking still so content with that? Are they going to oppose the registration? Are they happy to rely on this supposed consumer attention to details? That struck me as an interesting argument, and I’m not sure -- I understand why she made it, but I think the Justices are not so convinced.

 

Zvi Rosen:  Yeah. I think you’re right. Let’s be honest. If Booking was my client or yours, and we saw a new registration filing for Bookings.com, would you file opposition?

 

Arthur Gollwitzer:  I suspect I would.

 

Zvi Rosen:  I would, too. I think everyone’s afraid of, “Okay. Fine.” We actually kind of recognize that Booking.com actually has acquired distinctiveness and is functioning as a mark, even if not registered. Where does this take us? I don’t know the answer to that either. [Inaudible 28:09], we do a lot of 19th century decisions. We sort of rip them out of context and we use paragraphs as the whole thing. It’s sort of a reimagining, but it kind of works well for Goodyear. That one paragraph in Justice Fields’ opinion where he talks about adding “company” doesn’t change it. He’s talking about something that’s actually very different from modern law, but it fits surprisingly well into a discussion even though it’s not really -- where at the time you would say, “What the heck are you talking about?” about this case. Beyond the fact that the internet would be a little confusing. I kind of suspect there’s going to be some attempt to keep Goodyear, but to also maybe be a little wary of the ipso facto rule. I’m not positive how that’s going to work.

 

Arthur Gollwitzer:  Well, that takes us back to Justice Kagan’s question to the government. “If a per se rule is a bridge too far, what guidance can you give us—she asked the government—what guidance can you give us?” If we’re going to put some—now I’m using my words, not hers. It sounded like she was saying, “If we’re going to put some guardrails in our opinion, what are they?” The government focused on the very rare exception. The example she used was “tennis.net” where the top-level domain name also has a double meaning in connection with a more generic term “tennis”. Government conceded that that’s the rare exception. I’m not sure that gave Justice Kagan the guidance she was looking for, hoping to get, but it felt like they were all grasping for something skeptical of Goodyear, but something more than a free-for-all where anyone who wants to get a survey to pass the primary significance test gets a registration.

 

Zvi Rosen:  Yeah. No. It’s funny. The question presented is about the ipso facto rule. I suspect it’s not going to survive, but the heart of it might survive even if it literally doesn’t. Probably a good time to take some questions. If people don’t have questions, I have a few in the chamber as well.

 

Stephen Casey:  Good afternoon. Stephen Casey from Austin, Texas. Thank you so much to the panel for your discussion. This affects me not only on a theoretical sense, but a very practical sense. I went to register a trademark of a term that’s actually a product and became our company name, that we derived it from. There’s a car company that uses a couple of those letters in their car name. Their process, I think, what you are talking about, about the chilling effect of big companies, I went on the PTO website and looked at all the letters they sent out and all the companies they’ve challenged on anything that they’ve registered.

 

It’s very much that a challenge comes up, it’s a small company, and they either never respond and there’s a default, or they reach some sort of compromise. They use their power of leverage to almost trademark and entire word that doesn’t -- the car company’s Audi Motor Group. Anything that has A-U-D-I, no matter what the rest of the word is. It can be a 17-letter word that starts with A-U-D-I, and they basically said that those four letters are their [Inaudible 31:42] domain no matter what. I think there needs to be some pretty clear guidelines saying that you can’t get the world and you own those four letters for the rest of time. I think consumers are intelligent and they’ll be able to determine what’s going on. I’d like to get your perspective, though, on a little bit more of generics that have a specific -- they take on a different meaning.

 

Zvi Rosen:  I’ll jump in. Often times in trademark law, the boundaries are really amorphous between a generic and descriptive term. That can be really tricky. American Airlines, for instance, is an American airline, but it’s also the company American Airlines, it’s the classic example of a descriptive trademark. How much protection does that give you compared to other marks that have the word? Let’s say you have an airline, United American Airlines for instance, would that violate trademark for American Airlines? Whereas “airline” it’s just a generic term. You couldn’t protect “airline”, but you could protect American Airlines providing you show that the public recognizes it as a trademark.

 

One concern, I think, with the argument was if we’re going to allow some generic marks in --we have .com, you already have examiners who are really trying to split metaphysical hairs to figure out if something is generic or descriptive. You’re just making their job much harder and making it much harder and that in turn goes to the marketplace because you suddenly have even more marks where it’s really on the edge of generic and potentially have a very wide scope.

 

Arthur Gollwitzer:  I’ll weigh in. My mind took me in a completely different place in response to your question, and that is, I think the Booking.com attorney would say in response to your question, that that’s a perfect example. Your Audi example is a perfect example of where the confusion test saves the day. She’d say that the term “Audi” is not—unless it has—we’ll, I’m not sure of the foreign language meaning of it, but at least in English I don’t think anyone would argue it’s generic. Audi has its registration, it’s presumably in the classes relating to automobiles, and someone opens up a bar or restaurant here in—I’m in Austin where you are—and opens up a bar and restaurant and calls it Audi Eats. I don’t know that Audi, the automotive company, gets very far in suing Audi Eats for trademark infringement.

 

      That’s what the Booking.com attorney would say. In this instance, I might agree with her. It’s Audi’s and it’s probably registerable, as far as I can tell, on its own. The person down the street that has Audi Eats as their bar, I’m not sure. The channels of trade, everything is so different. There’s probably no confusion. Your fear is warranted. As a litigator if you have a small client who gets that cease and desist letter, they’re thinking, “How the heck am I going to have the money to defend this?” That’s a concern with our legal system as a whole.

 

As applied to this case, though, it’s not Audi, right? It’s that four letter—here it’s what, it’s six, seven letters “booking” is so generic on its own and to say that when I tack .com onto it, “Don’t worry about it. I’m not going to sue everybody because my mark’s weak.” That really scares me. That scares me more than the Audi suing the Audi Eats example because now it seems like you’re making it so much easier to register lots of different things. Unless both Zvi and I are right and the Court fashions an opinion here that maintains the Goodyear guardrails whether it expressly does so or not.

 

Micah Wallen:  All right. We’ll now move to our next question.

 

Tim Harken:  Yes. Tim Harken, Potomac. Why did the Court grant a grant cert in this case? And the fact that it granted cert, did that give you any indication of how they’re likely to rule? And then thirdly, how many questions did Justice Thomas ask?

 

Arthur Gollwitzer:  Zvi, I’ll go first on this one then quickly hand it off. I suspect they granted cert, I can’t know for sure, but I suspect granted cert because remember that Booking won in the district court and in the Fourth Circuit. It could be a sign that the Court didn’t agree with where the Fourth Circuit was going to take us here. On the number of questions, it was several of both sides.

 

Zvi Rosen:  Yeah. That might be more than all he’s asked from the bench otherwise. I’m not positive, certainly in the past decade. I don't know. It’s always dangerous, frankly, to read too much into both the cert grant and, frankly, into an argument. I mean, you never know why four judges -- it could be the judges, it could be the clerks. There’s so many reasons why they could have granted cert. Maybe someone really wanted it and the -- you just don’t know. I wouldn’t read too much into it necessarily, but I do agree. If you want to, that’s probably the best read.

 

Likewise, arguments, first few times I went to Supreme Court I really thought I knew how it would go, and I’ve been wrong enough times now to say, “Don’t think you know how it’s going to go.” Often times the Justices are really testing out arguments to actually fix up the direction they’re going which is the opposite instead of to go in a direction. Other times they’re just showing their hand. You just don’t know. I’d stop reading too much into this.

 

Arthur Gollwitzer:  Yeah. Zvi, I might add that this format where the Justices ask questions in seniority order, so it was less conversational, probably makes it even harder to read the tea leaves, because if Kavanaugh -- there were a couple time where Kavanaugh followed Gorsuch or Gorsuch followed Kagan and they were able to pick up on the point that was being discussed by the preceding Justice, that happened organically. For the most part, it felt like they were showing less of their hand because they weren’t -- they didn’t get that chance to argue with each other via the attorney at the podium. You’ve been there more than I have. Does that sound plausible to you?

 

Zvi Rosen:  Yeah. You’re absolutely right. A lot of Justices and, frankly, the attorneys didn’t quite know what to make of this new format. I think Nina Totenberg had a comment. I think she was serious, but I’m taking it as partially a joke, that they’re using this case about an area of law that only nerds care about to do a dry run for the more politicized cases. It was a very different environment for Justices. How do you let someone answer a question when you have this very regimented structure where questions have often been prepared in advance? Also, I don't know if it’ll get a lot of commentary, but asking a question seriatim. That was a practice, as I understand it, that was abolished by Justice Marshall in 1800. It’s funny that Court by Zoom, or whatever the actual platform is, not to genericize Zoom, is coming back.

 

Micah Wallen:  Zvi and Arthur, I’ll toss it back over to you for anything else you’d like to discuss.

 

Zvi Rosen:  Yeah. I actually have one that I found interesting. It wasn’t discussed, but I think interesting for commentary and that is, Is “.com” magical here? I was thinking of two things there. One is, for a while Booking.com had a commercial campaign which was “Booking.com, Booking.yeah.” They did not own “Booking.yeah” but if they did, and if that was generic top-level domain, could they in fact, get a trademark in Booking.yeah? Then the other side, Booking.com has, in fact, received generic top-level domain for “.booking”. Can they get a trademark registration for that?

 

Arthur Gollwitzer:  I hope you’re not throwing those to me for an answer because I don’t know. You make an interesting point about the shift away from .com, .org, .net where you have a top-level domain where that suffix is a greater variety. As we talk this through, does that support the Booking.com position because the monopoly power isn’t as great if that -- and I think it’s more than just making those top-level domains available, but having them gain consumer acceptance. Those have been around for a while, but it seems like most people still promote or most consumers think of things in terms of .gov, .org, .com, .net. If it’s Booking.booking or Booking.hotels, now does it sound more like advertising or marketing that occurs in the brick and mortar world and maybe the government would even agree. Maybe that’s their point. When they say that it’s a per se rule you can’t have a generic like booking, tack on .com, and then magically have the whole be greater than the sum of the parts. Maybe even the government in the Trademark Office would say, “Well, when it’s something other than .com, when the suffix is more distinctive, it’s a whole new ballgame.”

 

Zvi Rosen:  Of course, you said Booking.hotels, Booking.com also owns .hotels.

 

[Laughter 41:32]

 

Zvi Rosen:  This is according to Wikipedia. That’s what it says. Yeah. My intuition is that you might be able to get Booking.yeah, but not Booking.com. I think that’s generally, who knows how the Court will rule, but I do have intuition. There is a difference between Booking.com and Booking.yeah. [Crosstalk 42:00]

 

Arthur Gollwitzer:  Even Booking.yeah sounds almost suggestive or fanciful at that point, right? You start tacking things on that don’t have a descriptive or generic nature now, it is trademark law. You look at the proposed mark in its entirety. You look at the whole. If that suffix adds, it change -- if the whole has a completely different consumer perception, I don't know that the government may even concede that.

Zvi Rosen:  Yeah. Of course, that is not a Booking.com domain. Not yet. It’s available to more people. I do think that there’s a -- I imagine the Court will have to explore this some more. I don’t think that there’s an obvious answer right now, but I think they’ll suggest why the issue is -- there’s a great line from Justice Story. I think -- one of the very early copyright cases. That in IP, more than any area of law, the law approaches the metaphysical. I think that’s definitely the case here.

Micah Wallen:  All right. Still no other questions in this queue, so I think we’ve exhausted our audience of questions for the day. Did either of you have anything else you’d like to discuss or any closing remarks?

Arthur Gollwitzer:  Yeah. I’m fine. Thank you for letting us do this. I think it was a unique opportunity to do one of these teleforums on the first ever live audio simulcast. That makes it kind of fun.

Zvi Rosen:  It’s fun to be a part of a historic moment.

Micah Wallen:  All right. Well, on behalf of The Federalist Society, I’d like to thank both of our speakers and experts for the benefit of their valuable expertise and time today. We welcome listener feedback by email at [email protected]. Thank you all for joining us. We are adjourned.            

[Music]

 

Dean Reuter:  Thank you for listening to this episode of Teleforum, a podcast of The Federalist Society’s practice groups. For more information about The Federalist Society, the practice groups, and to become a Federalist Society member, please visit our website at fedsoc.org