ORSM.NET PRICELESS/PRYCLESS PARODY

In May 2002 I received the following email forwarded to me from my host:

Re: UNAUTHORIZED USE OF PRICELESS

Dear Mr. xxxxx:

We are the attorneys for MasterCard International ("MasterCard").

Since at least as early 1997, 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". MasterCard is the owner of U.S. service mark registration for the mark "PRICELESS" (Reg. No. 2,370,508) (the "Priceless Mark"). As a result of MasterCard's extensive advertising, the Priceless Mark has become associated exclusively with MasterCard's financial services products. Indeed, MasterCard's has applied for protection of the Priceless Mark in numerous countries throughout the world. Furthermore, MasterCard owns multiple U.S. copyright registrations for the Priceless Advertisements.

It has come to our attention that you are hosting a Web site available at the URL http://www.orsm.net that distributes offensive and obscene content using the format of the MasterCard Priceless Advertisements as well as the 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. Specifically, the URL allows the viewer to select from 32 different pages, each containing 10-15 photos, which the viewer may enlarge. The photos include images of nudity, oral sex, and sexual intercourse that are obscene. All the photos include the sequential display of a series of items belonging to one or more individuals, showing the "price" of each item, and concludes with the Priceless Mark. Representative samples of the offensive content in the URL are appended to this letter.

Please be advised that in publishing and hosting 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. The Infringing Material dilutes and tarnishes MasterCard's famous marks and holds our client out as sponsoring this obscene material by using the format of the MasterCard Priceless Advertisements and prominently displaying MasterCard's Priceless Mark.

Accordingly, we demand that you confirm immediately and no later than Monday May 13, 2002 that you will remove the Infringing Material from the Web site www.orsm.net 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,

Roger ******

Is the Orsm.net 'PRYCLESS' really an infringement of the copyright held by MasterCard, which allegedly owns the use of the word 'PRICELESS' - a word that can be found in the English dictionary...?? I think not...

Let's start with the copyright law - Title 17, United States Code, Chapter 1, Section 107: "Limitations on exclusive rights: Fair use", which reads:

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use [several factors must be considered.]

The several "factors" courts are required to consider to determine whether a use of a copyrighted work is "fair use" or infringement are:

The purpose and character of the use.
In the case of the "PRYCLESS" pictures, the purpose is parody, and it is obvious that it is parody, rather than a confusing image that might be thought by the public to be a genuine MasterCard advertisement.

The nature of the copyrighted work.
(the doctrine here is, some works are considered more "important" - and thus deserving of protection - than others. A wholly original novel, for instance, might be afforded more protection than, say, a newspaper article about a public event.) We obviously consider creative expression important, and consider our creative parody to be just as important in its role as making social commentary and provoking discussion among our readers.

The amount and substantiality of the portion used in relation to the copyrighted work as a whole.
Our parody has the "look" of a MasterCard 'PRICELESS' advertisement, but it is obvious that MasterCard won't be using an image of someone who has 'wet their pants' or passed out drunk on a sidewalk in an advertising campaign any time soon. Note also that none of the images contain a MasterCard logo to further aid in avoiding any confusion with the items being parodied. In addition, we are only parodising only the amount of MasterCard's 'PRICLESS' necessary to make it clear what is being parodied and that amount certainly could not be considered a "substantial" part of the whole of 'PRICELESS' campaign.

The effect of the use upon the potential market for or value of the copyrighted work.
No one would ever believe that Orsm.net PRYCLESS would aid in any way towards reducing the use of MasterCard's products or services.

For an example of how "fair use" is applied to cases of commercial parody in real life, consider Leibovitz v. Paramount Pictures Corp., (1998 U.S. App. LEXIS 2693 (2nd Cir. Feb. 19, 1998)). Briefly stated, photographer Annie Leibovitz took a photograph of actress Demi Moore, pregnant and in the nude, which was used as a cover for Vanity Fair magazine. Paramount Pictures, in promoting the movie Naked Gun 33 1/3, recreated the very famous photograph with a body double and pasted actor Leslie Nielsen's face on the double's body. Leibovitz sued, claiming copyright infringement. Paramount argued that the ad, even though it was obviously commercial in nature, was a parody under the fair use clause. The court found that the advertisement itself was "sufficient commentary to qualify as parody" and rejected arguments that parody should only be protected when the copyright owner would prohibit use of the original. The decision echoed a 1994 U.S. Supreme Court decision regarding 2 Live Crew's parody of the Roy Orbison song Pretty Woman, which firmly established that parody is a defense against copyright infringement claims, even in commercial situations. Interestingly, 2 Live Crew had asked permission to create the parody, but that permission was specifically denied. The rap group did the parody anyway and was sued for copyright infringement. The Supreme Court ruled against Acuff-Rose Music, Inc., which owned the rights to Pretty Woman.

Conclusion
The Orsm.net 'PRYCLESS' series is not only parody, it is an obvious parody. Under the clear provisions of the U.S. Copyright law's "fair use" clause, as affirmed by federal court cases, it is not a violation of MasterCard's [alleged] copyright on 'PRICELESS'.

** This document has been adapted with permission from http://www.thisistrue.com/parody.html - another site that has had to fight with clueless corporate lawyers.