25 October 2005. Businesses increasingly have reason to
conduct research related to copyrights or trademarks. The ever-more
competitive business world makes protecting a company's
intellectual property a key component to its success.
Trademark-related research might concern clearing the name of a new
business, product or service for use in commerce.
It might involve monitoring new trademark applications,
business filings and domain name registrations for potential
infringements. Or, it might deal with the proper use of a mark. For
example, "May I use my competitor's
trademark on my own Web site to illustrate how our products differ?"
Copyright-related questions might also pertain to infringement
concerns. Is it a violation of copyright if the design of another's
product – a dress, for instance – inspires your company to use it as
the basis for the design of a new skirt? Other copyright research
might involve ownership, public domain status, plagiarism or
businesses find their need for this kind of information
increasing, many tighten their research
budgets. It's a good thing then that much
of the information – but not all of it – is available for free.
There are several databases for conducting free copyright or
trademark research. Unlike mega-research systems, such as LexisNexis
or Westlaw, their scope is narrow. They
answer specific questions – those related to ownership or
infringement, but generally not both.
While they might serve adequately as the sole source of information
for fact-finding inquiries, their role is more to supplement, rather
than supplant, commercial research systems.
A surprising number of free databases
containing information related to copyrights exists. Many serve
highly specific needs. For example, performing rights organizations,
or groups that license the works of songwriters and music
publishers, often make available databases of the copyrighted songs
You could access free
resources, such as the databases of the
Society of Composers, Authors and Publishers (ACE),
Music, Inc. (BMI) or
SESAC, Inc., to discover information related to the performance
of a song. But be aware: The databases exist to provide licensing
contact information, and the licensing entity might differ from the
Better known is the
copyright records search utility at the U.S. Copyrights Office.
Considered an experimental interface "for
short, simple searches," it provides
access to works registered since 1978. You may search by author,
title, copyright owner (claimant), registration number (non-serial
publications) or ISSN (serial publications). The
"books" database also allows for
combined field searching, which means it will search across fields
to retrieve records matching the first keyword entered where it
appears at the beginning of a field.
Researchers should note this important limitation. The search engine
performs a simple character-string match on the first characters in
a field. In other words, a title search for the keyword,
wrath, finds titles beginning
with the word, wrath. But it does not retrieve works entitled The
Grapes of Wrath.
There are other
limitations. The search engine does not combine keywords with
Boolean (AND, OR, NOT) or proximity (W/n, NEAR) operators.
Therefore, finding a specific work owned by a film production
company might be difficult unless you know the exact title.
According to Library of Congress
documentation, queries "should take
into account any possible variant forms of names and titles. For
example, cross-references may not be provided for entries cataloged
under Chaikovskii and Tschaikowsky. Non-English names such as de
Mille and von Franz may appear under both the prefix and the
surname. A corporate entity such as Walt Disney Productions may
appear under that form or under Disney (Walt) Productions."
Another free resource worth noting is the
Cease and Desist letters database at Chilling Effects. A joint
project of several universities and the Electronic Frontier
Foundation, Chilling Effects collects Cease and Desist notices and
analyzes the relevant legal issues. It reproduces the notices –
minus redacted private information – with analysis similar
conceptually to the way West writes headnotes for reported cases.
Researchers will find several free databases
at the U.S. Patent and Trademark Office (USPTO). The
trademark databases provide access to pending and registered
federal trademark records and documents. You will not find
information pertaining to state, foreign or common law marks.
Particularly useful for preliminary research to clear a trademark
for use, is the
Trademark Electronic Search System (TESS). TESS contains
information about pending and registered marks, as well as
trademarks that became inactive after 1984. TESS
is remarkably current: Information
about paper or electronic filings appears in the database in about
one month or two weeks, respectively.
agency offers three interfaces for searching TESS. Two of these –
Structured and Free Form – require advanced search skills. New
searchers, or searchers unfamiliar with this type of research, might
prefer the "New User"
or basic form.
As is often the case, however,
the research question – even more than the skill of the searcher –
should determine the interface selected. For example, suppose you
want to discover the owner of a trademark. Use the basic interface
to query words in the mark, or the exact trademark. Similarly, an
exact trademark search using the basic interface might immediately
rule out the use of a particular word or phrase as a trademark.
But more complex research requires the use of a more advanced search
form. Suppose an exact trademark search using the basic interface
yields no matching trademarks. If you want to conduct preliminary
research to clear the mark, you should then switch to the Structured
or Free Form interface.
The Structured form
enables querying one or two fields in the database. For example, it
should help you find records that match a word or phrase in the
Basic Index (words in the trademark) and limited to a particular
International Classification code. For research involving three
combinations or more, you should select the Free Form.
While adequate for many types of trademark research, TESS has
limitations, or more precisely, a few peculiarities. For example, it
saves system resources by deactivating sessions where it detects no
activity. In other words, if you fail to interact with TESS, it logs
you off and loses the search results.
TESS supports three truncation symbols (*,
?, $), each of which performs differently. Limited to the mark
fields (Basic and Translation Indexes), the asterisk finds
characters to the left or right of the truncated term. Thus, the
query *inform* retrieves
trademarks containing words, such as informed or information, as
well as disinformation or misinformed.
dollar sign is also a left- or right-truncation symbol, but TESS
documentation warns against using it in the Basic or Translation
Indexes. Combined with a number ($n), it can limit the truncation to
a certain number of characters. Thus, the query,
yahoo$, in the owner field finds
marks owned by Yahoo! Inc., whereas the query,
yahoo, does not.
mark retrieves a single character, except when the character is a
space. You may use it to the left or right of a character string, or
inside a word. Thus, the query y??music
finds the inactive mark, YOUMUSIC, but not the trademark, Y! MUSIC.
The USPTO does a good job of documenting this database's
oddities. For best results, read the help section and perform
several trial-and-error queries. If necessary, consult a research or
Other free trademark
databases available at the USPTO's Web
Three additional free resources are also
Who's Suing Whom: Patent, Trademark and Copyright Edition, by
translation company InterLingua, Inc., helps you find patent,
trademark or copyright cases pending in federal courts. It provides
basic information about the cases. For a fee, you may retrieve the
full-text court dockets.
Rights Search (IPRS), by U.S. Customs and Border Protection,
enables searching intellectual property rights recordations, or
information about patents, trademarks and copyrights recorded by the
service gives registered users free access to select federal and
state case law. Use it to find mostly recent appellate level court
decisions on intellectual property issues.
When To Use Commercial Research Services
Free databases, containing copyright- or
trademark-related information, serve as useful tools for answering
many factual questions. For example, does a trademark with the name,
X, and a goods-and-services description similar to Y, already exist?
Or, who holds the copyright for the book, Z? But questions requiring
more in-depth research might warrant the use of more sophisticated
commercial databases, or both free and fee-based sources.
The database at the Web site of the U.S. Copyright Office is a tool
designed for use by the general public. Its character-string
matching, non-Boolean search engine represents old technology with
simplistic finding ability. While perfect for determining the owner
of a particular work published after 1978, it chokes on non-exact
queries. It cannot perform combination searches
-- that is, queries that require the conjunction, disjunction
or proximity of two or more terms.
copyrights database available via
the other hand, can handle complex queries. As is the case with the
free tool, DialogWeb lets you browse records in the database, but it
enables this feature for more fields. You may also combine and limit
terms for more manageable search results.
Commercial services also simplify trademark research. Finding
character-string matches of a trademark term with TESS, for
instance, requires using asterisks on both sides of the word and
searching it in two different indexes – Basic Index and Translation
Index. If you want to limit the query to a particular international
classification code, you have to add a third component to the
interface to Thomson & Thomson's federal
TRADEMARKSCAN database, however, lets you enter "words
containing" a certain trademark term. It
provides a drop-down menu for selecting a relevant international
classification code. It also identifies and describes the codes.
Combining search terms simply requires entering information in the
relevant search boxes.
The Bottom Line
Several useful free databases exist for
conducting copyright or trademark research. While sometimes they
represent a unique source – for example, the Cease and Desist
letters database at Chilling Effects – mostly they provide a free
alternative for answering straightforward questions. Conducting
in-depth research, on the other hand, requires the kind of power and
flexibility that a commercial service
Other than TESS and LexisONE, the
free tools do not help researchers answer infringement related
questions. TESS's search commands and
oddities may further require advanced searching skill. LexisONE
contains no federal trial level cases. With the exception of the
U.S. Supreme Court database, the case law is mostly current.
Therefore, efficient, cost-effective searching for infringement
related issues still, for the most part, demands use of the