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. ********** ------------------------------------------------------------------------- POLITECH -- Declan McCullagh's politics and technology mailing list You may redistribute this message freely if you include this notice. To subscribe, visit http://www.politechbot.com/info/subscribe.html This message is archived at http://www.politechbot.com/ -------------------------------------------------------------------------
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