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April 4, 2001
VIA E-MAIL AND FEDERAL EXPRESS
<Address removed>
RE:MasterCard/Infringement by OUTERWORLDS.COM web site
Dear <name removed>:
We are the attorneys for MasterCard International ("MasterCard").
Since 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".
Additionally, MasterCard is the owner of U.S. service mark registrations for the marks "PRICELESS" (Reg. No.
2,370,508); "THERE ARE SOME THINGS MONEY CAN'T BUY, FOR EVERYTHING ELSE THERE'S MASTERCARD" (Reg. No. 2,259,941); and THERE ARE SOME THINGS MONEY CAN'T BUY.
FOR EVERYTHING ELSE THERE'S MASTERCARD." (Reg. No. 2,297,299) (collectively, the "Priceless Marks"). Indeed, MasterCard has applied for protection of all of these marks in numerous countries throughout the world. As a result of MasterCard's extensive advertising, the Priceless Marks have become associated exclusively with MasterCard's financial services products. Furthermore, MasterCard owns multiple U.S. copyright registrations for the Priceless Advertisements.
MasterCard is also the owner of the trademark and all related rights in an interlocking circle design mark (the "Design Trademark") which is the subject of numerous U.S. trademark and service mark
registrations, and the owner of multiple federal registrations for MASTERCARD (unstylized) (the "MASTERCARD Mark"). The MASTERCARD Mark and Design Trademark have long been featured in MasterCard
advertising, including the MasterCard Priceless Advertisements. As a result of its long and continued use, the MASTERCARD Mark and the Design Trademark have become widely recognized as identifying MasterCard's
financial services products.
It has come to our attention that you are publishing at the web site that includes material that infringes and dilutes MASTERCARD Mark, Design Trademark, and Priceless Marks, and
that infringes MasterCard's copyrights in the Priceless Advertisements. This material (the "Infringing Material ") blatantly copies the sequential display of a series of items belonging to one
or more individuals, showing and conveying via voice over and/or other visual displays, the "price" of each item, and, at the end, infringes, with impunity, the MASTERCARD Mark, the Design Trademark and
the Priceless Marks. The Infringing Material is apparently posted to encourage subscriptions to the web site outerwolds.com.
Specifically, the Infringing Material is accessed via the following URL,
http://www.outerworlds.com/yearbook2000/Road_Trips/Priceless/pricelss.html. This link enables the viewer to read an infringement of the Priceless Advertisements, specifically a series of text appears,
"OuterWorlds Registration $20; Monthly ISP $20; Road Trip Airline Tickets $300.00 Pandorasbox Loses Her Skirt: Priceless."
Finally, at the end of the text, the MasterCard Mark and Design Trademark appear along with the infringing words: "for everything else try MasterCard."
Please be advised that in publishing the
Infringing Material, you have infringed 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.
Accordingly, we demand that you confirm immediately and no later than Friday, April 13, 2001, that you will remove the Infringing Material from this site and any other sites you are publishing or distributing
on the Internet, and that there will be no further publication of the Infringing Material or any other material which infringes MasterCard's rights as set forth above.
This letter does not constitute an
exhaustive statement of MasterCard's legal position nor is it a waiver of any of their rights and/or remedies in this or any other matter.
Very truly yours,
Russell H. Falconer
bcc:Colm Dobbyn, Esq.
Crystal Howard, Esq.
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