Patent Law and Booking.Com: as a whole or by parts

17 thoughts on “Patent Law and Booking.Com: as a whole or by parts

  1. 5

    Breyer has no idea how to think about intellectually property rights. He is the one that refers to what the Pharos did to invalidate modern technology. The man is a legend in his own mind. He thinks he is just so smart that he could have done all of anything other people have done if only he had thought of it. He has no perspective and no knowledge of how difficult inventions are actually to create without the benefit of hindsight, which he doesn’t acknowledge as he is just so smart he would have thought of all that had he only cared to.

    In this case, Breyer doesn’t get that what is dispositive is how the secondary meaning is formed in people’s minds. Breyer, which is typical of his character, doesn’t understand that he can’t override how people think because of his little theories. What matters is how people actually form the secondary meaning–not Breyer’s little theories that he forms in his head after extensive briefing and little actual knowledge of the real world.

    Here it is absurd to think that rules should be made up that violate how people think. “” immediate brings to mind an internet company focused on a business model of using the internet to provide a service of bookings. Just as “Space X” immediately brings to mind a company that is focused on building devices for space and that is focused on working hard and hiring the best.

    Breyer is an absolute disgrace to the legal profession.

    1. 5.1

      The reliance on “secondary meanings” is a bit of a fallacy, as the issue is NOT one of “descriptive” but instead is one of “generic.”

      Someone dangled a “shiny” of ‘descriptive, so let’s look at surveys’ which is merely a distraction.

      As noted, anyone can develop a survey that keys in on the fact that ANY url MUST BE distinctive based solely on the functional aspects of how the Internet works.

      This entirely misses the more important legal point.

      Easy questions for you, Night Writer:

      Is “” distinctive from “” or “”

      This factual answer is — and must be — “yes.”

      Or how about: is “” distinctive from “,” “,” “Disney.WHATEVER?”

      Again, the factual answer is — and must be — “yes.”

      Are you ready for these repercussions?

      Is anyone?

      1. 5.1.1

        Your argument is one of policy. You are saying at least implicitly that you admit that “” creates a secondary meaning. There is no survey error here. Everyone with a brain knows that “” instantly creates a secondary meaning just like “Space X” does.

        The things you are saying have to do with policy considerations for ignoring what is really going on because it is going to cause too many problems.

        Your questions are silly. Disney in itself has created a secondary meaning and is instantly recognizable no matter what suffix is attached. “Space X” is a good example of how if we play your little games we can see without the “X” the TM loses its secondary meaning.

        Again, you are creating examples that don’t capture what is happening and all your arguments go to policy considerations because of problems that will be created.


          My argument is NOT one merely of policy.

          The lever of “generic” is simply different than “descriptive” and there is no attachment of “secondary meaning” available.

          There is NO indication of survey error — as no “error” of A survey need be implicated.

          My questions are quite to the contrary, anything BUT silly — precisely because they DO show the necessary consequences of the ‘logic’ employed by the Court.

          That you don’t like the questions BECAUSE the questions DO show that problems will follow is reason to NOT dismiss the questions (or attempt to denigrate them as somehow being ‘mere policy’).


            What you are saying is policy.

            And, get over it. Add “.com” to “bookings” and it creates a secondary meaning in people’s head just like adding “X” to “Space” does.


              Not at all.

              I suggest that you actually read what I have posted.

              I also suggest that you ‘entertain’ those “silly questions.”

              You might realize just how NOT silly they are…


                I suggest that you read and think about what I wrote.

                And try to figure out what our dispute is. I narrowed it down to a sentence.

                I’d be interested in you attempting to narrow our dispute to a sentence.

                1. I have – clearly.

                  What you wrote is deficient – for reasons already provided.

                  One of the ‘disputes’ here is that plain generic is just NOT the same as descriptive (you seek to employ a mechanism for descriptive when the notion of generic actually controls).

                  That was easy.

                  Your turn – are you going to actually entertain those questions? Feel free to simply agree, or if you have anything cogent to add/distinguish, by all means please be on point.

                2. >>Majority: The question is whether the term “taken as a whole” is generic.

                  anon, the issue is as simple as that. That is the dispute. I told you what the holding would be and I was right.

                  All of your points are policy questions. The fact is that whether there should be a rule that two generics are still a generic simply does not agree with the reality of how people’s minds work. All of your comments go to consequences of not not making the per se rule.

                  Please try to be more concise and work to understanding what the dispute is.

                3. link to

                  You are going in circles, and are not listening to what I have actually stated.

                  I have already said that you were right in predicting that the Court would hold as they did — just as I predicted that they would not grasp the legal issues at hand.

                  As I stated, we both ‘win.’

                  Now, will you address the consequences?

                4. anon,

                  The consequences are going to be complex to work out and will depend a lot on how people views these marks.

                  I haven’t worked through how it will play out. You raise good points as to the problems this holding is going to cause. I don’t get why you think these are not policy issues as they are. The application of the law says that “” has a secondary meaning and should be registrable.

                  I could work out what will happen, but I don’t have time. Probably going to be a lot of litigation and turf grabs.

                5. How in the world are consequences of law (to which you admit that I am correct) being labeled as “policy?”

                  You seem to want to use that label, but not understand what that label means.

  2. 4

    The interesting part (to me) is the MISS in:

    Justice Breyer would start with the fact that the components (Booking and .com) are both generic and then ask, is there something more in the combination that transforms these lacking-components into a source-identifier.

    Apart from the patent-sphere, the trademark-sphere ‘reasoning’ has missed the mark in the majority’s views.

    The driver is NOT whether or not an item (as a whole) IS a source-identifier.

    The nature of the Internet necessarily makes ANY combination of ‘before-dot’ and ‘after-dot’ TO BE a singular item, and thus TO BE a source-identifier.

    This however ‘gets wrong’ the prohibition at the onset of ‘generic.’

    This most definitely ‘gets wrong’ the REASONING of the Goodyear’s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 U. S. 598, 602 (1888) case.

    Be that as it may, the necessary implications of this case (no matter how it is attempted to be constrained — and attempts to constrain are ALREADY underway) will unfold. The necessary functional aspect of singularity of ANY web site address creates the effect — on the ‘as a whole’ view — that any and everything at the piece part level (generic AND other established trademarks) are fair game.

    I would LOVE to be in error on this.
    Alas, I truly doubt that I am – and I certainly doubt that there is a cogent argument (given THIS decision) that dictates a conclusion other than the one that I provide.

  3. 3

    The worst part is the duplicity of saying “as a whole,” but actually treating it in piece parts.

  4. 2

    Breyer holds very strange views of IP. For example, “a patent is like a ticket on a ferris wheel.” <– decode that riddle out of me. This probably springs from his strong view that rights come from government.

    1. 2.1

      A basic understanding of Quid Pro Quo — of an exchange that has equal partners — is definitely absent from several on the Bench.

  5. 1

    Established businesses versus pro-innovation…

    This is not the disparity that a first glance might seem to make it.

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