Embarked on an exciting educational experiment, we have convened americas leading scholars who have filed griefs on both sides of the case that you just heard as well as a scale that filed a brief on either party to help us understand the oral arguments that we just heard, Justice Holmes once said of the constitution it is an experiment as all of life is an experiment. Youre about to join as an educational experiment, the arguments that you just heard our technical, the kind that law professors and journalists and citizens often dont listen too closely, we just have the privilege of hearing them live so our job in the next hour is to unpack them and understand as thoughtfully and as nonpartisan as possible with the competing arguments are so that ultimately view the people of the United States and cspan watchers and friends can evaluate the arguments themselves. I want to do homework after the show and read the briefs in the case and the best way to understand what we heard was to go to the Supreme Court website, Supreme Court. Gov and youll find it on the homepage under the name of the case and after our discussion you can dig into the arguments on both side and make sure you read the brief on both sides who can make up your own mind. With that introduction its my great pleasure to introduce three of americas leading trademark scholars who will join us today and help us understand the arguments you just heard. Rebecca is a stanford amendment at harvard law school, she filed a brief of trademark scholars on behalf of Neither Party in the booking. Com case. Margaret duncan filed a brief support of respondents in the booking. Com case, she is an adjunct professor and she filed a brief on behalf of the intellectual Property Law Association of chicago where she is vice chair of the anarchist committee. And karen is legal director at the Frontier Foundation which filed a brief in support of the petitioner and booking. Com. Rebecca, margaret and karen welcome and thank you so much for joining us. Thank you jeff. Wonderful. Rebecca, professor, lets begin with you, congratulation your brief was stated several times in the brief that you filed for trademark on behalf of Neither Party but before diving into your arguments in that brief, as concisely as possible can you tell us what this case was about and what the main legal arguments on both sides in the states in the case. I think the core question are at what point does the fact that consumers are likely to recognize a generic term for a group of goods or services but has a prominent provider and so people are likely to associate the provider with the generic term, at what point should not convert into some sort of enforceable trademark so we dont want people to get a monopoly on a perm because of their most wellknown provider of it but there is a countervailing concern at a certain point if somebody is associated with the term then theres a potential for confusion if other people use the term even if they should be free to use the term in some way. So booking. Com is a good example because through marketplace success in advertising it has developed a reputation but also allows you to make bookings online which is pretty much what you would expect from any bottomline Reservation Service and so having control over booking. Com could be potential for preventing other people from doing reasonable things like booking. Net. And it is actually significant whether we should give booking. Com basically a tiny little right and let us see where the right goes in specific cases or whether we should say no, the game is not worth the candles, risk that will be anything competitively and so great that it should not get a tiny little right at all, this is a big question. Thank you so much for that. I hear you saying that this question of whether by putting dark, the individual nearterm you should be able to trademark it and whether that becomes a descriptive term is an open question, we heard in the argument a lot of discussion of the relevant legal source of authority, on the one hand the trademark argued that this case called goodyear from the 1880s said the general, you cannot trademark a generic term like weber and on the other hand be respondents on the other side are green for booking. Com said the federal law passed in the 1940s and amended in the 1980s came up with a different test which was a primary significance test, how would people understand the phrase, with ac as a generic phrase or something associated with a particular brand, those of arguments that we have to unpack and ill begin in the order that the court did in france were watching on cspan, the first party is called the petitioner, the second one is the respondent, heres the petitioner represented by erica ross who works for the Solicitor Generals Office for the u. S. Government and the respondent was booking. Com, were lucky to have Karen Mcsherry who filed a brief on behalf of the petitioner for the electronic Frontier Foundation and karen, so glad youre here and i want you to distill for cspan friends, the essence of the petitioners argument as you understood at the very end of the case and erica summed up the claim that a generic term can be turned into a particular trademark by showing a number of respondents think is associated with a particular mark and she said the relevant question and this is not the beginning of her argument was a secondary meaning of the way people understand the term irrelevant. The oral argument today we had two women are getting on either side of this historical moment, which is exciting, then we followed it with this panel, and i think that is notable and exciting and worth acknowledgi acknowledging. So, i think the key to the petitioners argument is under goodyear, this law from 1888 is put forth the something is generic that it, we will stop. We dont have to get into the primary, that is something you think about if you are talking poker something is descriptive or not. There is also the two generic terms of. Com. The pto can make a decision that its a purely generic term we are done with the argument, and that is essentially what happened here. Whats interesting to me, i was hearing they were struggling for a role. Rule. I dont know if they are comfortable saying that goodyear controlled for the internet but i think i was really sort of hearing how they should rule recognizing the different decision they make is going to have enormous consequences for the trademark law and the Domain Name System and i thought it was interesting that on the one hand there was a little discomfort i heard with following goodyear which is fine but also following the interpretation. It was indeed interesting and Justice Alito raised the point what do you think i should do if i think goodyear is from a different era but i also think that it was in the pre internet era that makes sense. Margaret, can you please sum up the argument of the respondent is making and what is the test they are arguing should prevail and what is your response to the question about whether neither may provide . Our view is generally there was a primary site for ten primary significance as the trademark for the particular goods or services the problem that was raised it should not be a bright line test which is what they are doing going forward. In the trademark statute itself to 15 u. S. Code test says we look at evidence of the primary significance of that particular term to the public, and ive been practicing for 39 years and we have always looked at what is the evidence, the factual question and determined that answer we dont use or havent used any Circuit Court at the top to just say stop, you are out of the game. Its generic, no trademark registration. I think theyve always looked at the evidence in the statute. As i hear you hopefully explaining part of the dispute is whether the generic term could ever be trademarked if it requires a secondary meaning is tested by how people understand it or if they couldnt understand the generic term is associated with a particular brand. Your breathing was sighted several times which the cspan viewers, it is unusual for a single brief to be cited on the argument so congratulations, professor. But it sounds like part was this question you have expressed skepticism about the justices that it was mistakenly viewed. The. Tell us about the dispute and what legal consequences you think accounts for the case. It is one resource that is how the domain system works so people dont think of it as having to force significant here is how i think of it. Say you asked ask a bunch of po solve a complicated math problem and then you look at the people that manage to solve it and then ask some questions of them and the majority that managed to solve it is the case majority and that also gets to the other question does that mean that most people got the question right . No, it means most people that were able to understand this other concept got it right. Unlike most surveys which disqualify a small percentage of people because they threw away some stuff that they gave intentionally or accidentally, so you exclude them and that is usually a small percentage. The problem here is even after they trained people on the difference between serial, a generic term, and kellogg, a trademark producer of cereal, and even after they told people not all dot com is a trademark. Even after that, 33 basically thought yes all dot coms are trademarks and additional 6 were not sure. So 40 of people who had in theory got him through the screen that couldnt make the distinction, and again why should they, it isnt relevant to them in their daily lives. So, that is the question of our survey is a good way of getting at the thing we are interested in or are they asking a question that isnt fitting and i dont think that the answer is that so this is the question how do we determine what it means and the relevant law is more from the 20th century case about kelloggs and shredded wheat. It had been patented and people do a producer of it so they tended the association and other people got to make sure could you make it and call it by that name and the court said in that case even if there is a powerful association with one producer as a de facto you still cant keep other people from using the generic term so i think margaret is right that we do in empirical study, but we have the empirical question that isnt enough sometimes if there is a competitive reason, we let them use it subject to the duty not to fool people so you can use the term but you have to use your own trademark with it. Things like that. That is precisely what Justice Breyer said. He said the power of the trademark as everyone knows there is one, grocery. Com, flowers. Com, maybe that isnt so bad, but theres lawsuits about essentially preventing other companies from using pizza or booking in their name and that would create an area of exclusivity that might create a monopoly power. A tell us first of all because the test was mentioned, so give us a sense of test you are urging on the court and then tell us more about the concert and Justice Breyer and the professor just identified. No one can use the name that has booking in it. I am not necessarily worried about booking a. They understand it intuitively when you have generic. Com and youve already registered the domain name youve already got the results and enormous commercial attachment. You make that choice when you choose a name. You can choose a generic name and that will give you a certain advantage out of the gate because when people are looking for that kind of service they will go to you or they will more than likely go to you. When you add that and youve registered with. Com, you cement a powerful partial advantage, but the tradeoff for that is you dont get a trademark and it. That has been a longstanding way of thinking about generic. What i was referring to that of the sends is when we talk about the primary significance and weve been talking about whether something requires a secondary meaning that would be a descriptive part. The arguments are that when you have a purely generic part. It goes back to the choice that a company has made out of the gate that will choose one kind of commercial advantage that comes from generic choice into giving up another kind of commercial advantage that comes with getting a trademark and so that is the key question here. The worry that we had for any other kind of company will register it for the domain name and then other companies wouldnt be able to come along and compete effectively. Theres a lot of concerns about competition in the online space. The i it is dangerous for the intranet and that to my organization represents its internet users, Small Business owners and we also try to protect Competition Online because we think that is how we get better innovation. Thank you for that and for explaining the test. To repeat it so we understand the primaries against should be relevant for a descriptive mark but not for a generic mark if we have a genetic thing like booking and whether you have something that is more descriptive than what is being described. Let me ask you, margaret, what would be the consequence of a ruling against you . Lesa argued for the responded that there is plenty of these that have a dot com trademark, weather. Com, dating. Com come and she suggested they could be challenged if the court rules against booking. Com and Justice Ginsburg asked the same question. It was her very first question out of the gate. She said could apply the registrations. 1,445th could be challenged if the court rules against booking. Com so tell us about your effects of the ruling against you. I heard it in the oral argument and want to also express theyve done a remarkable outstanding job on the historical arguments today that were for the first time in the history of the court by telephone, which is a difficult thing to do. I do want to say trademarks are tricky and whether a word is generic or descriptive is a factual issue and we need to determine the answer whether you are at the Patent Trademark Office or on the jury. I think a flexible test again works well. This mark is generic. Thats the end of the story we are not going to look at the evidence and it could be other things and surveys. It could be newspaper articles, magazine articles, dictionary definitions, but the truth of the matter is in this case it shows 75 of consumers, whether the survey was brought or not, that 75 of consumers in this particular survey thought booking. Com with the brand, not generic. There is a sliding scale trademark they are highly protectable and they are coined words that have no real meaning. Then theres words like apple did you have a meaning that when combined with a good or service it doesnt have anything to do with apples the fruit, they are highly protected because an apple doesnt tell you that their goods and services or computers. What is interesting is descriptive marks tell you something about the goods or services that dont necessarilyy tell you completely what they are. So if we had clothing with apples all ove over it, would tt be protected with a trademark of apple because it describes a feature of the goods or services. That is the question of trademark. Weve seen that in all of the costs which is what is the primary of that word or term to the consuming public and there is no other way to describe th that. If it is descriptive, its worked well to determine that because its factual and it isnt subject to a bright line yes or no. It has to be looked at based on the evidence. If i say i am at booking today, do you know if im at a football game, if i reserved in Airline Ticket or email or i was hitting the books hard . If they question that a jury has to determine and a flexible test is the best one to apply. Thank you for that and for noting what they did in the ca case. Its striking how the advocates are asked questions by whatever justices they like. It is a give and take. Here we had a formal running down of the justices and they all asked questions including Justice Thomas and they were quite respectful of each other and made some jokes but generally with one or two pauses the whole thing ran pretty smoothly. So, with that lets dig into the questions that struck you the most significantly. The first was that of chief justice roberts. He said council you mentioned the goodyear case but not the language in the statute for the primary significance of the mark. It shall be the primary criteria. You said the case came from battered more than goodyear. What was the significance of that question and more generally, which questions or would you like to share with the viewers and for an as being especially significant . The first is hopeful it connects to the case of a broader thing going on in the court which is the reading the manual theory of the constitutional interpretations. I think that it is unfortunate the court is increasingly taking the position that the statute clearly this means they often struggle in cases like this where it is explicitly enacted on about 100 years give or take of american decisions creating a common law of trademark and unfair competitions and so the court doesnt have the best tools or theyve abandoned some of the tools and the judicial basket for dealing with the statutory language that has some sort of a common law basis or what was in it did in the backdrop of making certain specific changes to the common law and the primary significance is a great one. If they discussed and indicated that they were pretty clear on what had happened which is in the early 80s the court invalidated on the theory consumers wanted the game to be a unique product and therefore it wasnt about the trademark because the product was unique. This reasoning is problematic because it also applies to my beloved diet coke which is unique that it is just a type of soda as well. So, congress wanted to make sure that no one could say because people love the taste of diet coke isnt a valid trademark. And so they didnt actually address, the amendment didnt address the question here which is if it isnt because it is unique but because it refers to preexisting meanings, is that generic, how do we figure out what that means. So the primary significance makes sense when you are asking do you think that it refers to a specific producer it doesnt make sense when you are talking about shredded wheat which until a year ago. Many thing is for that. I want to make sure i u