[ISN] FC: Mastercard lawyers threaten Attrition.org over satire site

From: InfoSec News (isnat_private)
Date: Wed Jun 27 2001 - 23:46:41 PDT

  • Next message: InfoSec News: "[ISN] Security UPDATE, June 27, 2001"

    ---------- Forwarded message ----------
    Date: Wed, 27 Jun 2001 18:00:07 -0400
    From: Declan McCullagh <declanat_private>
    To: politechat_private
    Cc: Jeanne.Hamburgat_private, jerichoat_private,
         theresa.melodyat_private, staffat_private, sgamsinat_private,
         ayde_ayalaat_private
    Subject: FC: Mastercard lawyers threaten Attrition.org over satire site
    
    Politechnicals may remember a similar war of nastygrams erupting in April 
    over a rec.humor.funny posting that had fun with their "priceless" 
    advertising campaign. Mastercard backed down and the joke remains online.
    
    Humorless Mastercard lawyers threaten rec.humor.funny newsgroup
    http://www.politechbot.com/p-01905.html
    
    Mastercard's suite of lawyers -- who really should find a more productive 
    way to occupy their time -- also sued Ralph Nader and lost:
    http://www.salon.com/business/feature/2000/09/13/nader/
    
    As always, I invite Mastercard to respond and clarify their position. I 
    will forward their reply unedited.
    
    -Declan
    
    **********
    
    From: security curmudgeon <jerichoat_private>
    To: Jeanne.Hamburgat_private
    Cc: Heathens <staffat_private>, Sioda <siodaat_private>,
         Junk Yard Dog <alphaat_private>
    Date: Tue, 26 Jun 2001 00:37:22 -0600 (MDT)
    Subject: Re: INFRINGEMENT BY ATTRITION.ORG
    
    
    On Thu, 21 Jun 2001 Jeanne.Hamburgat_private wrote:
    
     > 	RE:	MasterCard/Infringement by attrition.org
     >
     > Dear Sirs:
     >
     > 	Your email address was provided to us by Inficad, which is hosting a
     > web site.  As you probably are aware from the correspondence already
     > forwarded to you by Inficad, we are the attorneys for MasterCard
     > International Incorporated ("MasterCard").
     >
     > 	Since at least as early 1998, MasterCard has aired a series of
     > television and print advertisements that feature the names and/or images of
     > a series of goods or services purchased by one or more individuals and
     > which, with either voice-overs and/or other visual displays, convey to the
     > viewer the price of each of these items (the "MasterCard Priceless
     > Advertisements"). At the end of each of the MasterCard Priceless
     > Advertisements a phrase identifying some priceless intangible that cannot be
     > purchased (such as "a day where all you have to do is breathe") is followed
     > by the word and/or voice over: "priceless".  Immediately following
     > "priceless" are the words and/or voice overs: there are some things money
     > can't buy, for everything else there's MasterCard".
     >
     > 	Additionally, MasterCard is the owner of  a U.S. service mark
     > registration for the mark "PRICELESS" (Reg. No. 2,370,508) (the "Priceless
     > Mark").  Indeed, MasterCard has applied for protection of the Priceless Mark
     > in numerous countries throughout the world. As a result of MasterCard's
     > extensive advertising, the Priceless Mark has become associated exclusively
     > with MasterCard's financial services products. Furthermore, MasterCard owns
     > multiple U.S. copyright registrations for the Priceless Advertisements.
     >
     > 	It has come to our attention that you have posted and are
     > distributing, at the http://www.attrition.org web address, material that
     > infringes the MasterCard Priceless Advertisements and that further infringes
     > MasterCard's Priceless Mark.
     >
     > 	This material (the "Infringing Material ") blatantly copies the
     > sequential display of a series of items belonging to one or more
     > individuals, showing, the "price" of each item, and, at the end, infringes,
     > with impunity, the Priceless Mark.
     >
     > 	In associating this content, which is often obscene, with
     > MasterCard and its famous Priceless Mark, the Infringing Material infringes
     > MasterCard's rights under the federal and state trademark and unfair
     > competition laws, under the federal and state anti-dilution laws, and under
     > the Copyright Act.
     >
     > 	We must have your prompt, written assurance no later than June 22,
     > 2001, that you will remove the Infringing Material. Otherwise, MasterCard
     > will have no choice but to consider legal action.
     >
     > 	We look forward to your prompt reply.
     >
     > 				Very truly yours,
     > 					
     > 				Jeanne M. Hamburg
     > 				Baker Botts, L.L.P.
     > 				30 Rockefeller Plaza
     > 				New York, New York 10112-4498
     > 				Phone: (212)408-2698
     > 				Fax (212)705-5020
     > 				EMail:  Jeanne.Hamburgat_private
    
    
    Dear Jeanne Hamburg:
    
    	I am in receipt of your e-mail sent Thursday afternoon (June 21,
    2001). There are several points I will address regarding your e-mail:
    
    1. Your e-mail to me does not indicate which files or images you feel are
    infringing upon Mastercard's rights.  Currently, Attrition.org offers
    170,125 files or images maintained by seven volunteer staff members.
    Without clearly identifying these files, it is difficult to examine your
    complaint and react appropriately.
    
    2. Attrition.org is a web site primarily aimed at providing computer
    security resources. It is widely known and quoted by media outlets as just
    that. The Mastercard "priceless" trademark is filed with the USPTO as a
    financial industry trademark. Since Attrition.org does not operate as a
    business, and does not conduct business with or as a financial
    institution, there is little to no chance that Internet surfers will
    mistake us with Mastercard or believe we offer competing services. For
    there to be trademark violation, it is my understanding that there needs
    to be a "likelihood of confusion to the consumer". I think it is
    exceptionally clear that no such confusion could exist to someone able to
    operate a computer.
    
    http://tess.uspto.gov/bin/showfield?f=doc&state=ga937n.3.1 IC 036. US 100
    101 102. G & S: Financial services, namely, providing credit card, debit
    card, charge card and stored value smart card services, prepaid telephone
    calling card services, cash disbursement, and transaction authorization
    and settlement services. FIRST USE:  19980200. FIRST USE IN COMMERCE:
    19980200
    
    3. I have read several stories of Mastercard suing various individuals or
    web sites over alleged infringement upon the "priceless" trademark. In
    each case I have found, the material was protected under the Copyright Act
    107 which allows fair use in parodies. In Campbell v. Acuff-Rose Music,
    510 U.S. 569, Justice Souter delivered the opinion of the Court, stating,
    "Suffice it to say now that parody has an obvious claim to transformative
    value, as Acuff Rose itself does not deny. Like less ostensibly humorous
    forms of criticism, it can provide social benefit, by shedding light on an
    earlier work, and, in the process, creating a new one. We thus line up
    with the courts that have held that parody, like other comment or
    criticism, may claim fair use under 107."
    
    4. In your original e-mail you stated that you MUST have our written
    assurance by June 22. Given that you e-mailed me on the afternoon of June
    21 and demanded a reply in one business day, that tells me that you are
    relying on pure harassment and threat of legal action to try to win your
    case, not a solid legal foundation. In fact, you had originally sent us a
    word document with no text explanation as to the content of the
    attachment. When I replied that day and told you that I wouldn't open an
    untrusted word document and that you should resend it in ASCII text, you
    didn't reply at all. That told me this was nothing more than a frivilous
    attempt to scare Attrition.org and it's upstream ISP into removing
    something from our site not clearly defined in your letter.
    
    In conclusion, quit wasting both of our time. Quit harassing our upstream
    provider who has no control over the content of this site. Quit sending us
    vague threats of legal action without clearly documenting what you find
    objection to.  Quit demanding immediate replies to mail when you refuse to
    show the same courtesy to me.
    
    Finally, I find it extremely ironic that Mastercard is trying to 'own'
    something that is touted to be "priceless" and something that "cannot be
    purchased".
    
    **********
    
    From: Jeanne.Hamburgat_private
    To: jerichoat_private, Jeanne.Hamburgat_private
    Cc: staffat_private, siodaat_private, alphaat_private
    Date: Wed, 27 Jun 2001 09:48:44 -0500
    Subject: RE: INFRINGEMENT BY ATTRITION.ORG
    
    Dear Security Curmudgeon:
    
    We have received your reply and respond as follows.  We had originally sent
    a letter dated June 4 to the postal office box at which you have registered
    Forced Attrition's address. We have not received any communication from you
    in response to either that letter, or any subsequent electronic
    communication.  As you are apparently aware, we have also communicated with
    Inficad and had also provided Inficad with a list of the infringing sites,
    which follows:
    
    http://www.attrition.org/gallery/other/priceless20.jpg
    http://www.attrition.org/gallery/other/priceless1.jpg
    http://www.attrition.org/gallery/other/priceless2.jpg
    http://www.attrition.org/gallery/other/priceless3.jpg
    http://www.attrition.org/gallery/other/priceless4.jpg
    http://www.attrition.org/gallery/other/priceless5.jpg
    http://www.attrition.org/gallery/other/priceless6.jpg
    http://www.attrition.org/gallery/other/priceless7.jpg
    http://www.attrition.org/gallery/other/priceless8.gif
    http://www.attrition.org/gallery/other/priceless9.jpg
    http://www.attrition.org/gallery/other/priceless10.jpg
    http://www.attrition.org/gallery/other/priceless11.jpg
    http://www.attrition.org/gallery/other/priceless12.jpg
    http://www.attrition.org/gallery/other/priceless13.jpg
    http://www.attrition.org/gallery/other/priceless14.jpg
    http://www.attrition.org/gallery/other/priceless15.jpg
    http://www.attrition.org/gallery/other/priceless16.jpg
    http://www.attrition.org/gallery/other/priceless17.jpg
    http://www.attrition.org/gallery/other/priceless18.jpg
    http://www.attrition.org/gallery/other/priceless19.jpg
    
    MasterCard objects to the dilution as well as infringement of its
    trademarks; the content posted at the urls set forth above dilutes
    MasterCard's trademarks by placing the PRICELESS mark in a context, often
    obscene, which may be offensive to many consumers of MasterCard's services.
    MasterCard also objects on the grounds of copyright infringement. The case
    to which you refer is not a trademark case and did not involve obscene
    content, which the vast majority of the sites set forth above, contain.
    
    It is unclear to me what lawsuits you are referring to.  We have concluded
    two lawsuits which resulted in termination of infringing uses.
    Additionally, MasterCard is currently litigating two disputes in court
    involving its rights in the Priceless campaign and will not hesitate to do
    so again if necessary.  In sum, our client is quite serious about protecting
    its trademark and copyrights and does expect the courtesy of a prompt reply.
    It would also be useful for further correspondence to have the
    identification of your name.
    
    Sincerely,
    Jeanne Hamburg
    Baker Botts L.L.P.
    30 Rockefeller Plaza
    New York, NY 10112
    (212) 408-2698 (phone)
    (212) 705-5020 (fax)
    email:jhamburgat_private
    
    ***********
    
    From: security curmudgeon [mailto:jerichoat_private]
    Sent: Tuesday, June 26, 2001 2:37 AM
    To: Jeanne.Hamburgat_private
    Cc: Heathens; Sioda; Junk Yard Dog
    Subject: Re: INFRINGEMENT BY ATTRITION.ORG
    
    
    
    On Thu, 21 Jun 2001 Jeanne.Hamburgat_private wrote:
    
     > 	RE:	MasterCard/Infringement by attrition.org
     >
     > Dear Sirs:
     >
     > 	Your email address was provided to us by Inficad, which is hosting a
     > web site.  As you probably are aware from the correspondence already
     > forwarded to you by Inficad, we are the attorneys for MasterCard
     > International Incorporated ("MasterCard").
     >
     > 	Since at least as early 1998, MasterCard has aired a series of
     > television and print advertisements that feature the names and/or images
    of
     > a series of goods or services purchased by one or more individuals and
     > which, with either voice-overs and/or other visual displays, convey to the
     > viewer the price of each of these items (the "MasterCard Priceless
     > Advertisements"). At the end of each of the MasterCard Priceless
     > Advertisements a phrase identifying some priceless intangible that cannot
    be
     > purchased (such as "a day where all you have to do is breathe") is
    followed
     > by the word and/or voice over: "priceless".  Immediately following
     > "priceless" are the words and/or voice overs: there are some things money
     > can't buy, for everything else there's MasterCard".
     >
     > 	Additionally, MasterCard is the owner of  a U.S. service mark
     > registration for the mark "PRICELESS" (Reg. No. 2,370,508) (the "Priceless
     > Mark").  Indeed, MasterCard has applied for protection of the Priceless
    Mark
     > in numerous countries throughout the world. As a result of MasterCard's
     > extensive advertising, the Priceless Mark has become associated
    exclusively
     > with MasterCard's financial services products. Furthermore, MasterCard
    owns
     > multiple U.S. copyright registrations for the Priceless Advertisements.
     >
     > 	It has come to our attention that you have posted and are
     > distributing, at the http://www.attrition.org web address, material that
     > infringes the MasterCard Priceless Advertisements and that further
    infringes
     > MasterCard's Priceless Mark.
     >
     > 	This material (the "Infringing Material ") blatantly copies the
     > sequential display of a series of items belonging to one or more
     > individuals, showing, the "price" of each item, and, at the end,
    infringes,
     > with impunity, the Priceless Mark.
     >
     > 	In associating this content, which is often obscene, with
     > MasterCard and its famous Priceless Mark, the Infringing Material
    infringes
     > MasterCard's rights under the federal and state trademark and unfair
     > competition laws, under the federal and state anti-dilution laws, and
    under
     > the Copyright Act.
     >
     > 	We must have your prompt, written assurance no later than June 22,
     > 2001, that you will remove the Infringing Material. Otherwise, MasterCard
     > will have no choice but to consider legal action.
     >
     > 	We look forward to your prompt reply.
     >
     > 				Very truly yours,
     > 					
     > 				Jeanne M. Hamburg
     > 				Baker Botts, L.L.P.
     > 				30 Rockefeller Plaza
     > 				New York, New York 10112-4498
     > 				Phone: (212)408-2698
     > 				Fax (212)705-5020
     > 				EMail:  Jeanne.Hamburgat_private
    
    
    Dear Jeanne Hamburg:
    
    	I am in receipt of your e-mail sent Thursday afternoon (June 21,
    2001). There are several points I will address regarding your e-mail:
    
    1. Your e-mail to me does not indicate which files or images you feel are
    infringing upon Mastercard's rights.  Currently, Attrition.org offers
    170,125 files or images maintained by seven volunteer staff members.
    Without clearly identifying these files, it is difficult to examine your
    complaint and react appropriately.
    
    2. Attrition.org is a web site primarily aimed at providing computer
    security resources. It is widely known and quoted by media outlets as just
    that. The Mastercard "priceless" trademark is filed with the USPTO as a
    financial industry trademark. Since Attrition.org does not operate as a
    business, and does not conduct business with or as a financial
    institution, there is little to no chance that Internet surfers will
    mistake us with Mastercard or believe we offer competing services. For
    there to be trademark violation, it is my understanding that there needs
    to be a "likelihood of confusion to the consumer". I think it is
    exceptionally clear that no such confusion could exist to someone able to
    operate a computer.
    
    http://tess.uspto.gov/bin/showfield?f=doc&state=ga937n.3.1 IC 036. US 100
    101 102. G & S: Financial services, namely, providing credit card, debit
    card, charge card and stored value smart card services, prepaid telephone
    calling card services, cash disbursement, and transaction authorization
    and settlement services. FIRST USE:  19980200. FIRST USE IN COMMERCE:
    19980200
    
    3. I have read several stories of Mastercard suing various individuals or
    web sites over alleged infringement upon the "priceless" trademark. In
    each case I have found, the material was protected under the Copyright Act
    107 which allows fair use in parodies. In Campbell v. Acuff-Rose Music,
    510 U.S. 569, Justice Souter delivered the opinion of the Court, stating,
    "Suffice it to say now that parody has an obvious claim to transformative
    value, as Acuff Rose itself does not deny. Like less ostensibly humorous
    forms of criticism, it can provide social benefit, by shedding light on an
    earlier work, and, in the process, creating a new one. We thus line up
    with the courts that have held that parody, like other comment or
    criticism, may claim fair use under 107."
    
    4. In your original e-mail you stated that you MUST have our written
    assurance by June 22. Given that you e-mailed me on the afternoon of June
    21 and demanded a reply in one business day, that tells me that you are
    relying on pure harassment and threat of legal action to try to win your
    case, not a solid legal foundation. In fact, you had originally sent us a
    word document with no text explanation as to the content of the
    attachment. When I replied that day and told you that I wouldn't open an
    untrusted word document and that you should resend it in ASCII text, you
    didn't reply at all. That told me this was nothing more than a frivilous
    attempt to scare Attrition.org and it's upstream ISP into removing
    something from our site not clearly defined in your letter.
    
    In conclusion, quit wasting both of our time. Quit harassing our upstream
    provider who has no control over the content of this site. Quit sending us
    vague threats of legal action without clearly documenting what you find
    objection to.  Quit demanding immediate replies to mail when you refuse to
    show the same courtesy to me.
    
    Finally, I find it extremely ironic that Mastercard is trying to 'own'
    something that is touted to be "priceless" and something that "cannot be
    purchased".
    
    **********
    
    From: security curmudgeon <jerichoat_private>
    To: Jeanne.Hamburgat_private
    Cc: staffat_private, siodaat_private, alphaat_private
    Date: Wed, 27 Jun 2001 15:31:45 -0600 (MDT)
    Subject: RE: INFRINGEMENT BY ATTRITION.ORG
    
    
    Dear Jeanne Hamburg:
    
    The postal address associated with Attrition.org is fictitious. No US
    Postal mail was received from you or your firm. Further, you erroneusly
    claim you have received no communication from me after. That is an
    outright lie, or someone at your firm has mishandled this dialogue.
    
    Your firm mailed a word document with no explanation to
    jerichoat_private on June 4, 2001. I replied to that mail
    (originally sent by Dorothy.Izakat_private). Further, I replied from
    jerichoat_private on June 4, 2001 in reply to your "Unprofessional
    Conduct" (the subject of the e-mail), which was sent to
    theresa.melodyat_private and Jeanne.Hamburgat_private I once
    again told you that you needed to send me your original mail in ASCII
    text, not a Microsoft Word document. Your next communication was June 21,
    2001 and was replied to within 2 business days despite your irrational
    demand that I reply by the next day.
    
    I will state right now that your initial lack of reply and subsequent
    seventeen day reply puts you in NO position to demand my immediate
    replies. Because someone in your organization did not share my mail
    with you does not mean I didn't reply. The fact that you have multiple
    people contacting me and not coordinating on your side reinforces my
    opinion that this is a frivilous lawsuit and focuses on threats and
    harassment to get your way.
    
    Would you care to cite which two cases you have concluded that resulted in
    termination of infringing uses? After I read more about those I will then
    give this issue the attention it deserves.
    
    **********
    
    
    
    
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