Finding information about the law and ferreting out answers to legal questions is called legal research. If you have a question and can't find the answer in a Nolo book on trademarks or the PTO's website, you may want to do your own legal research.When it comes to addressing such cutting-edge issues as domain name and trademark conflicts, the Web is the legal research tool of choice. This section gives you an introduction to conducting legal research on the Web. You'll follow these six steps:
1.Find and read the most relevant federal law (statutes).
2.Make sure the law you find is up to date.
3.Find and read relevant regulations issued by the PTO or other agency.
4.Find any court decisions that interpret the relevant statutes and regulations.
5.Read through summaries of the court decisions to find the most relevant case—one that deals with roughly the same facts and issues as your situation.
6.Make sure the court decisions you find are up-to-date.
TipLegal Research:
How to Find and Understand the Law, by Stephen Elias and Susan Levinkind (Nolo), will give you a much more detailed discussion of how to do legal research on the Web and in the law library. It covers the whole process in detail and includes step-by-step instructions for using online research services discussed in this chapter, such as versuslaw.com and keycite.com.
Some Key Legal Terms
Statute:
A written law passed by Congress or a state legislature and signed into law by the President or a governor. Statutes are often gathered into compilations called "codes," large sets of books that can be found in many public and all law libraries. The federal statutes and the statutes ofalmost all states are now also available on the Internet.
Case:
A term that most often refers to a lawsuit—for example, "I filed my small claims case." However, in our discussion of legal research, "case" refers to a written decision by a trial judge—or, if the trial court's ruling has been appealed, by a panel of appellate judges.
Regulation:
A rule that is made by an administrative agency such as the IRS or the PTO. For example, PTO regulations govern the procedures by which trademark applications are filed.
1. Find the Most Relevant and Current Federal Statutes
Because domain names are used across state borders, domain name disputes are usually governed by federal laws. A federal statute that talks about the issue you're interested in is generally the best place to start your research.Federal trademark laws are collectively known both as the Lanham Act and as the Federal Trademark Act of 1946 (as amended). The Lanham Act is codified (published) in Title 15, Sections 1051 through 1127, of the United States Code. There are two versions of the United States Code on the Web—one maintained by Cornell Law School and the other by the House of Representatives Law Library. If you know the specific citation of the statute, you will use the House of Representatives Law Library version. For instance, suppose you are looking for the law dealing with trademark dilution, and know that its citation is Title 15, Section 1125 (perhaps you found the citation in some background material you read). You would take these steps:
•Go to http://www.nolo.com/ and click the "Online Legal Library" tab at the top of the page. Then click "Statutes." This will take you to the Nolo Legal Research Center.
•Click "Federal Laws."
•Scroll down to the U.S. Code part of the page.
•Enter 15 in the Title box and the section number (for instance 1125) in the section box. Click search.
If you don't have a specific citation, the Cornell site is probably your best bet. For instance, assume that you want to find the federal remedies for trademark infringement. You would take these steps to get to and use the Cornell site:
•Go to http://www.nolo.com/ and click the "Online Legal Library" tab at the top of the page. Then click "Statutes." This will take you to the Nolo Legal Research Center.
•Click "Federal Laws."
•Scroll down to the U.S. Code part of the page.
•Click "Browse the U.S. Code at Cornell Law School."
•Click "Title 15" on the home page first if you want to conduct a keyword search of the Lanham Act for "infringement remedies."
•Alternatively, click "Title 15," scroll down the list of chapters until you get to trademarks (Chapter 22), click that link and browse the subject titles. In this example you would find the statute on infringement remedies in Section 1114. Both sites offer online searching help if you get stuck.
2. Make Sure You're Reading the Latest Version of the Statute
Once you find the statute and section you're looking for, the next step is to make sure the version you're looking at is current. Laws change, and it does you little good to look over a law that is outdated. It takes a lot of time to update the United States Code, and you may be searching a version of the U.S. Code that is really two years out-of-date. For updating federal statutes, we recommend the Thomas website, at http://thomas.loc.gov/. This site provides both pending and recently enacted legislation. Follow the instructions carefully to see whether a particular statute you've found in the code has been amended or even repealed by more recent legislation.Thomas also helps you research all bills pending before Congress as well as bills recently passed and signed into law by the President. Keeping track of pending bills will give you a leg up on the most recent changes to the U.S. Code should those bills eventually become law. The information on Thomas is organized according to the session of Congress you are searching for—for example, the 106th Congress (1998-1999). If you don't know which period of time you are interested in, you will need to search each session that might be important. Searches in Thomas can be made by topic, by a bill's popular title or by bill number. Finally you can search by public law number—for instance, P.L. 96-4537. The public law number is how a statute is identified until it is placed with other statutes of similar subject matter in the United States Code.
3. Find Relevant Federal Regulations
If you decide to register your domain name as a trademark with the U.S. Patent and Trademark Office (see Chapter 8), you may have occasion to study the trademark rules issued by the PTO. As mentioned, these rules are known as regulations and are published in Title 37, Chapter 1, of the Code of Federal Regulations (C.F.R.). There are two reasons why you would want to look up PTO regulations:
•The PTO refers to a particular regulation when corresponding with you, or on its website.
•You are trying to figure out what a particular statute means and wish to see whether the PTO has interpreted it. You can find these regulations on the Web by taking the following steps:
•Go to http://www.nolo.com/ and click the "Online Legal Library" tab at the top of the page and then click "Statutes." This will take you to the Legal Research Center.
•Click "Federal Laws."
•Scroll down to find the Code of Federal Regulations and enter a keyword or section number. Trademark regulations are found in Title 37, Parts 1-199, Section 2.
4. Find Relevant Court Decisions
If you are trying to answer a legal question, you not only need to know what the underlying laws say, you also need to know what court decisions have had to say on your particular issue. These court decisions are part of what we know as the "common law." As a general rule, the higher the court deciding the case, the more important the case is. The U.S. Supreme Court always has the last word on federal laws.
The Federal Court System
The federal court system has three tiers. Federal District Courts, the trial courts of the federal system, hear lawsuits for the first time. Certain cases are heard in specialized federal trial courts, such as bankruptcy court or tax court. On the second level are the federal Courts of Appeal, which hear appeals from the District Courts. An appeal is a process by which one party to a lawsuit (usually the losing party) asks a higher court to review the actions of a lower court to correct mistakes or injustice. On the top level is the United States Supreme Court, which hears appeals in a few select cases of its choosing. If you have found a relevant statute or regulation, your next best step is to look for court decisions that have interpreted it. The best way to do this is to search for the statute, by number, in a database of court decisions. There are several such databases on the Web. Dollar for dollar, we prefer Versuslaw at http://www.versuslaw.com/. This service costs $6.95 a month and gives you access to most state and federal court decisions. Online help is readily available.Two sites on the Web do a good job of collecting domain name and trademark cases and providing commentary on what they mean to this rapidly developing legal area:
http://www.phillipsnizer.com/
This site, maintained by a New York law firm, offers the best collection of cases dealing with domain name disputes. It provides both a brief and an extensive summary for each case, and a link to the full text of the case if it is available on the Web. When you get to the home page, first click "Internet Library" and then "Domain Name/Path." The cases are listed in alphabetical order. The more cases you read on this subject, the better feel you'll have for how a court would likely rule in yours if you end up in court.
http://www.fenwick.com/
This site is maintained by the renowned intellectual property law firm of Fenwick & West. The Publications page features an excellent scholarly 1998 article by Mitchell Zimmerman and Sally Abel, titled Securing and Protecting a Domain Name for Your Website. Although the article itself has not been updated since 1998, it provides a detailed history of domain name disputes and summaries of the major cases that provide the background for today's judicial decisions. The Publications section also offers a newsletter with quarterly updates.
5. Make Sure the Case is Up-to-Date
Once you have found a case that seems to address your question, you will need to check that it is still good law. A case is still "good law" if it hasn't been superseded by a more recent case in a jurisdiction that matters. The best way to do a check on the Web is to use a tool called KeyCite at http://www.keycite.com/. KeyCite costs $3.75 a search (a credit card is required), but it usually takes only one search to find out whether or not the case you found is still good law. KeyCite comes with online help.
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