Home page logo
/

isn logo Information Security News mailing list archives

FC: Mastercard lawyers threaten Attrition.org over satire site
From: InfoSec News <isn () c4i org>
Date: Thu, 28 Jun 2001 01:46:41 -0500 (CDT)

---------- Forwarded message ----------
Date: Wed, 27 Jun 2001 18:00:07 -0400
From: Declan McCullagh <declan () well com>
To: politech () politechbot com
Cc: Jeanne.Hamburg () bakerbotts com, jericho () attrition org,
     theresa.melody () bakerbotts com, staff () attrition org, sgamsin () mastercard com,
     ayde_ayala () mastercard com
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 <jericho () attrition org>
To: Jeanne.Hamburg () bakerbotts com
Cc: Heathens <staff () attrition org>, Sioda <sioda () attrition org>,
     Junk Yard Dog <alpha () attrition org>
Date: Tue, 26 Jun 2001 00:37:22 -0600 (MDT)
Subject: Re: INFRINGEMENT BY ATTRITION.ORG


On Thu, 21 Jun 2001 Jeanne.Hamburg () bakerbotts com 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.Hamburg () Bakerbotts com


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.Hamburg () bakerbotts com
To: jericho () attrition org, Jeanne.Hamburg () bakerbotts com
Cc: staff () attrition org, sioda () attrition org, alpha () attrition org
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:jhamburg () bakerbotts com

***********

From: security curmudgeon [mailto:jericho () attrition org]
Sent: Tuesday, June 26, 2001 2:37 AM
To: Jeanne.Hamburg () bakerbotts com
Cc: Heathens; Sioda; Junk Yard Dog
Subject: Re: INFRINGEMENT BY ATTRITION.ORG



On Thu, 21 Jun 2001 Jeanne.Hamburg () bakerbotts com 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.Hamburg () Bakerbotts com


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 <jericho () attrition org>
To: Jeanne.Hamburg () bakerbotts com
Cc: staff () attrition org, sioda () attrition org, alpha () attrition org
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
jericho () dimensional com on June 4, 2001. I replied to that mail
(originally sent by Dorothy.Izak () bakerbotts com). Further, I replied from
jericho () attrition org on June 4, 2001 in reply to your "Unprofessional
Conduct" (the subject of the e-mail), which was sent to
theresa.melody () bakerbotts com and Jeanne.Hamburg () bakerbotts com  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/
-------------------------------------------------------------------------


ISN is hosted by SecurityFocus.com
---
To unsubscribe email isn-unsubscribe () SecurityFocus com 


  By Date           By Thread  

Current thread:
  • FC: Mastercard lawyers threaten Attrition.org over satire site InfoSec News (Jun 28)
[ Nmap | Sec Tools | Mailing Lists | Site News | About/Contact | Advertising | Privacy ]
AlienVault