MasterCard's 'priceless' ads not infringed by political broadcasts

In MasterCard International Incorporated v Nader 2000 Primary Committee Inc, the US District Court for the Southern District of New York has granted the defendant's motion for summary judgment and has dismissed the plaintiff's claim that the defendant's political broadcasts infringed its rights in marks relating to its well-known 'priceless' series of advertisements.

Since 1997, MasterCard International has promoted its credit cards through a series of advertisements that have come to be known as the 'priceless' advertisements. These advertisements feature the sequential display of a series of names and images of several goods and services purchased by individuals, with voice-overs and visual displays that convey to the viewers the price of each of these items. At the end of each 'priceless' advertisement, 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 words or voice-over: "Priceless. There are some things money can't buy, for everything else, there's MasterCard."

In August 2000, Ralph Nader and his political committee began running an allegedly similar advertisement on television and on Nader's website that promoted the presidential candidacy of Nader in the 2000 presidential election. The political advertisement included a sequential display of a series of items showing the price of each ("grilled tenderloin for fund raiser: $1,000 a plate"; "campaign ads filled with half-truths: $10 million"; "promises to special interest groups: over $100 billion"). The advertisement ended with a phrase identifying a priceless intangible that cannot be purchased ("Finding out the truth: priceless. There are some things that money can't buy").

MasterCard filed suit against Nader, alleging that, among other things, the political advertisement infringed and diluted MasterCard's trademarks relating to its 'priceless' advertisements. In response, Nader and his political committee moved for summary judgment for dismissal of the action.

The district court quickly disposed of MasterCard's claims. It held that there was no likelihood of confusion between MasterCard's 'priceless' advertisements and Nader's political advertisement in spite of the fact that (i) MasterCard's federally registered trademarks PRICELESS and THERE ARE SOME THINGS MONEY CAN'T BUY. FOR EVERYTHING ELSE THERE'S MASTERCARD and its 'priceless' advertisements are well-known, and (ii) Nader did not dispute that he employed the same marks in the same look, sound and commercial impression. The court relied heavily on the dissimilarity between MasterCard's credit and debit card business and Nader's political candidacy, as well as the sophistication of the target audience.

Next, the court noted that the Federal Trademark Dilution Act specifically exempts non-commercial use of a mark from its coverage. Accordingly, it dismissed MasterCard's dilution claim by finding that Nader's use of MasterCard's trademarks was exempt as it was non-commercial and political in nature.

The court also dismissed a number of copyright infringement claims.

Susan M Natland, Knobbe Martens Olson & Bear LLP, Newport Beach

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