From thomasleavitt@hotmail.com Sun Jul 1 02:39:34 2001 From: Thomas Leavitt To: declan@well.com Cc: Jeanne.Hamburg@bakerbotts.com, jericho@attrition.org, theresa.melody@bakerbotts.com, staff@attrition.org, sgamsin@mastercard.com, ayde_ayala@mastercard.com Date: Wed, 27 Jun 2001 20:17:19 -0700 Subject: Re: FC: Mastercard lawyers threaten Attrition.org over satire site Declan, I wonder if the MasterCard people realize how completely idiotic they appear? Do they not bother to research the nature of the sites they launch these volley's against? It constantly amazes me that large companies sick lawyers on people without any thought to the PR consequences... harassing a site with the grassroots reach of attrition.org is nothing short of criminally stupid. Are they aware of the hundreds of different "parody" versions of their commercials floating around the internet, exchanged in hundreds of thousands of emails daily, the vast majority of them obscene or scatalogical or otherwise referring to something offensive or humiliating relative to the person involved? I'm not sure how this plays out in the legal field, but it seems to me that a very strong case could be made that "priceless" mark is already substantially diluted, and has come to represent a generic situation or use - ala "Kleenex" or "Xerox". Take a look at this, for example: A search on Google.Com in their "image" search section (off Advanced Search screen) for "priceless". http://images.google.com/images?q=priceless&btnG=Search&site=images This yields, let me count: 1, 2, 3, of the top four images are MC parodies - two with *NO* reference at all to MasterCard, a third with a "meta" reference "MasterRace". Two of these could be considered "obscene". Of the next four images, three are MC parodies, 3 of which use the MC symbol trade dress, 2 of which do so in a parodic fashion "TurkeyNecks.Com" and "MasterHard" (which is at least indecent, if not obscence). Of the several remaining four duplicate images which make us of this pattern (several of which are no longer public), two of them are clearly obscene, and I suspect the rest are. Three make no reference at all to MasterCard. On the next page returned, there are four non-duplicate images, none of which refer to MasterCard, all of which are obscene or scatalogical. And, I suspect any person with a fair amount of Internet experience has been exposed to numerous examples of this generic pattern over the past few years... I recognize almost every image returned by this search from emails and URLs sent me by friends and associates. Not once is anything returned referring to MasterCard financial services. Not once has anyone ever sent me anything referring to MasterCard's financial services. In short, MasterCard's mark can be demonstrably proven to have already experienced substantial dilution and damage due to association with obsenity, separate from and prior to attrition.org's activities and the items enumerated demonstrate it to have transitioned into "folk" usage in a context where the meaning is commonly understood, with no reference to MasterCard's at all in many situations. I would suspect that there are many people accross the world who have no idea that this pattern of usage originated with MasterCard. In short, I suggest that MasterCard's lawyers go crawl back in the hole they came from, and that corporate America get a clue, and reign in the sharks before they wind up getting savaged themselves. Regards, Thomas Leavitt Internet Citizen since 1990 >From: Declan McCullagh >Reply-To: 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 >Date: Wed, 27 Jun 2001 18:00:07 -0400 > >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 >To: Jeanne.Hamburg@bakerbotts.com >Cc: Heathens , Sioda , > Junk Yard Dog >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 >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/ >------------------------------------------------------------------------- > _________________________________________________________________ Get your FREE download of MSN Explorer at http://explorer.msn.com