Monday, May 04, 2020

What's at Stake in Today's Booking.com Trademark Oral Argument?

by Michael C. Dorf

The Supreme Court kicks off its unprecedented live audio May oral argument schedule today with a nifty little trademark case. In US Patent & Trademark Office v. Booking.com, the Court is reviewing a decision by the US Court of Appeals for the Fourth Circuit, which allowed trademark registration for Booking.com, even though the term merely combines a generic term for making reservations ("booking") with a top-level domain (".com"). As the Fourth Circuit summarized its reasoning, "adding '.com' to [a generic term] can result in a non-generic, descriptive mark upon a showing of primary significance to the relevant public."

In the Supreme Court, the Solicitor General argues that the Fourth Circuit decision is inconsistent with longstanding principles of trademark law. The SG's brief cites the aptly confusingly captioned Goodyear's Rubber Manuf'g Co. v. Goodyear Rubber Co. (1888). Just as that case held that the addition of an entity designation (such as "Co." or "Inc.") does not render an otherwise generic term trademarkable, so too in our era for the addition of a top-level domain (such as ".com"). Booking.com pushes back by arguing in its brief that the Lanham Act (enacted nearly six decades after Goodyear) repudiated Goodyear's reasoning, making consumer distinctiveness the sine qua non of trademark eligibility. A brief by scholars in support of Booking.com and another by scholars nominally arguing for neither side both provide arguments in favor of this more nuanced and less per se approach.

On its face, the Booking.com case presents a classic clash between rules and standards. The government favors a relatively clean rule: no registration of a generic term with a top-level domain appended to it; the respondent and most of the amici argue for a more fact-sensitive standard that looks at consumer attitudes. The relevant statutory text is not dispositive, although it leans in the direction of the respondent. It denies trademark registration to "a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive." Here there is agreement that "booking" is merely descriptive but the case does not involve a trademark for "booking." It's about "Booking.com." As a matter of pure logic, it's possible to combine a generic term with a generic top-level domain and get something that the public regards as distinctive.

Although my general inclination towards standards over rules and my analysis of the statutory text lead me to lean towards Booking.com's position over that of the government, I do not have strong views on the merits. Accordingly, I want to pivot now to asking what's at stake in the case.

The Booking.com case is not the first legal interaction between domain names and trademarks. In the relatively early days of the Internet, there arose a phenomenon known as cybersquatting. It was (and remains) very cheap to register a domain name. Accordingly, enterprising scammers would register domain names that incorporated the names of major companies and then demand large sums of money to release the registration. As illustrated by a leading 1998 Ninth Circuit case, cybersquatting was actionable as trademark dilution, but the next year Congress went further by creating a specific cause of action for "cyberpiracy." Meanwhile, the real power to police domain names lies not so much with Congress as with the Internet Corporation for Assigned Names and Numbers (ICANN), which is the source of the Uniform Domain Name Dispute Resolution Policy. A SCOTUS trademark ruling will have implications under that policy but mostly in ways that are limited to the US.

Even with respect to only the US and its courts, one might think that relatively little is at stake in a case like Booking.com. After all, (during normal times, when people travel) the key to a successful online travel site is to drive traffic to, say, Booking.com rather than competitor sites like Hotels.com, Expedia, Travelocity, Kayak, and so forth. And whether or not there is trademark protection for "Booking.com," the firm can still register and have exclusive use of the domain name. What benefits does Booking.com get from trademark registration?

One answer is that trademark registration enables domain name protection against cybersquatters and competitors. Alert corporate staff will buy up domain names for similar-sounding domains. Thus, if you type "Bookings.com," into your browser, you'll be redirected to Booking.com. But there are a great many variations. For example, "hotelbooking.com" redirects to a competitor site called getaroom.com. If one thinks "hotelbooking.com" infringes "Booking.com" (a question on which I express no opinion), then trademarkability of Booking.com is valuable because it enables--via the cyberpiracy provision of trademark law--Booking.com to sue getaroom.com. Trademarkability is thus an important tool for blocking cybersquatting.

In the mid to late 1990s, as the Internet was catching on, there was a wave of scholarship from breathless (mostly young) legal scholars arguing that the Internet changed everything, which led to an inevitable backlash from other (mostly older) legal scholars arguing that our existing legal categories were adequate to the task of addressing cases arising via the Internet. Although I was a young scholar at the time, I generally sided with the older scholars in that debate.

However, as applied to first generation cybersquatting and the Booking.com case, there's something to the Internet-is-different argument. To be clear, that something is not the breathless claim that cyberspace is some radical new place that defies territoriality and other old-fashioned notions. The key to what's generating controversies, in my view, is that we have two fairly different legal regimes intersecting and interacting. Domain registration works according to a first-come-first-served rule. If someone else has a website called mycutecat.com, you can register mycutecat.org or mycatsocute.com or anything else that's very similar. However, if there's a trademark for "mycutecat," then you cannot legally use consumer-confusing variations on that name. Because these legal regimes are so different, when they come into contact with one another--as in cybersquatting cases and trademarkability of domain name cases like Booking.com--there is inevitable tension.

Finally, I want to close with a note of caution. I'm not a specialist in intellectual property. I shared an earlier draft of this column with my colleagues James Grimmelmann and Oskar Liivak, who are IP scholars, and they were gracious enough to point out some ways in which I missed important features of the Booking.com case. (Remaining errors are, of course, my own responsibility.) Although the party briefs and amicus briefs do a nice job of explaining the core issues in Booking.com, there is likely more at stake than the Justices--who, like me, are not IP specialists--realize.  For example, some of the legal fight in the Booking.com case may involve concerns about other potential rights in cyberspace, such as the use of Twitter and Instagram hashtags combined with common phrases. Accordingly, one would hope that in resolving this case, the Court writes a suitably narrow and humble opinion.

4 comments:

Joe said...

"writes a suitably narrow and humble opinion"

(listens to oral argument)

So, not a "Lisa Blatt opinion."

Tanmay Shukla said...

Thanks for the great summary. Has any brief in this case considered that the .com world may interact with the brick-and-mortar world, e.g., Amazon Lockers? Say there is a very popular neighborhood booking agent with the generic name, "Booking." They cannot trademark it. If Booking.com opens an outlet right opposite the store with essentially the same name, potentially confusing customers, the store will probably try to sue them under unfair competition laws. The store may still win on the facts, but going into court we have the strange situation where the original store with a rightful unfair competition claim doesn't have a trademark for their name, because they cannot, but booking.com does for a very similar and potentially confusing name. That's weird, and it may be weird enough for booking.com's argument to win before some trial judges. The broader point is that trademark not only grants holders the right to prevent others from using the mark, but also the presumptive right to use the mark themselves.

Any thoughts on this?

Michael C. Dorf said...

Nice question. I don't have a good answer, but I do think that part of the weirdness/unfairness is not peculiar to the .com situation -- namely that trademark law can sometimes result in firms losing the ability to use a name they may have been using for longer than the trademark holder.

Ethan Campbell said...

They can't trademark it. On the off chance that Booking.com opens an outlet directly inverse the store with basically a similar name, conceivably confounding clients, the store will most likely attempt to sue them under uncalled for rivalry laws. The store may in any case win on the realities, yet going into court we have the bizarre Top UK Dissertation Help circumstance where the first store with a legitimate uncalled for rivalry guarantee doesn't have a trademark for their name, since they can't, however booking.com accomplishes for a fundamentally the same as and possibly befuddling name. That is odd, and it might be unusual enough for booking.com's contention to win under the steady gaze of some preliminary adjudicators.