Practice Description:
L. Donald Prutzman has a broad-based intellectual property and trade regulation practice that encompasses both litigation and non-litigated matters. Donald has broad experience in commercial litigation, particularly disputes involving trademark, copyright and antitrust issues. Other areas in which he is an experienced litigator include securities regulation and insurance coverage.

Donald's practice also includes a full range of non-litigated intellectual property matters including licensing, purchase and sale of intellectual property assets, copyright registration and trademark registration and prosecution, including representation of clients before the Trademark Trial and Appeal Board, and antitrust and trade regulation advice and compliance.

Donald has been selected for inclusion in New York Super Lawyers for 2008, 2009, 2010, 2011 and 2012, listed as a legal elite in Avenue Magazine for 2012, and listed as a top ranked intellectual property attorney in Fortune Magazine, the American Lawyer and Corporate Counsel for 2012.

Publications:

• Overview of the Madrid System and the United States Perspective,  by L. Donald Prutzman.  Reprinted with permission from New York State Bar Association International Law Practicum , Autumn 2012, Vol. 25, No. 2, published by the New York State Bar Association, One Elk Street, Albany, New York 12207

• Protecting Your Intellectual Property by Staying Informed and Knowing Your Options, By Albert L. Jacobs, Jr., L. Donald Prutzman and Andrew Berger. Reprinted with permission from: Inside Newsletter. Fall 2012, Vol. 30. No. 2, published by the New York State Bar Association. One Elk Street, Albany, NY 11207
  
  
• Recent Court Decision Bolsters Writers' Protection against Idea Theft, E-Alert, July 2012


• ICANN Releases the List of Applicants for New gTLDS—Do You Need to Consider Any Action?, June 2012


• E-Alert: Does a publishing agreement granting the right to publish a work "in book form" include the right to publish the work as an e-book?, February 2012, Vol. 4, No. 1


• With ICANN's Controversial Decision to Expand the Number of Generic Top-Level Domains; Is Your Domain Name Safe?, January 2012


• "Online brawl," by L. Donald Prutzman and Amy S. Beard, Managing Partner Magazine, December 2011/January 2012 edition


• Donald Prutzman and Amy Beard of Tannenbaum Helpern explore the implications of ICANN's controversial decision to allow the vast expansion of generic top-level domains.


• "Blocking Your Mark From Registration as a .XXX Domain Name," reported in IP In Brief, September 7, 2011 


• "The Developing U.S. Law Regarding the Invisible Use of Trademarks of Others in Cyberspace"  by L. Donald Prutzman, NYSBA International Law Practicum, Autumn 2010, Vol. 23, No. 2 


• International Intellectual Property Protection: The Berne Convention, The Madrid Agreement and Protocol, and Other International Agreements, NYSBA International Law Practicum, Autumn 2009, Vol. 22 No. 2


• "Understanding importance of the Territoriality Principle: Protection for famous trademarks not used in the U.S.,"reprinted from International Law Practicum, Vol. 20, No. 2, Autumn 2007


• "The Territoriality Principle and Protection for Famous Marks in the Americas,"reprinted from International Law Practicum, Vol. 20, No. 2, Autumn 2007


• Non-U.S. Trademark Owners Should Consider Protecting Trademarks in the US Even if There Is No Current US Use," Reprinted with permission from the November 2007 issue of the Intellectual Property & Technology Law Journal. 


• United States Patent Protection for Computer Software, NYSBA International Law Practicum, Spring 2006, Vol. 19 No. 1


• "Geographical Indications - An Emerging Form of Intellectual Property," International Law Practicum, Vol. 18, No. 1 (Spring 2005). "International Trademark Protection in the United States and the European Community," International Law Practicum, Vol. 16, No. 1 (Spring 2003).
  Author of Personal Jurisdiction Chapter of Federal Civil Practice, Published by the New York State Bar Association, 1989.

Speaking Engagements:

• How to Negotiate Your Intellectual Property and Technology Transactions, THSH CLE Program, January 24, 2013
  
  
• How to protect your intellectual property from new forms of online infringements and brand attacks, THSH CLE Program, September 12, 2012

• "Trademark Basics: What Lawyers Need to Know to Protect Clients In An Internet Age" , October 23, 2008, New York City, sponsored by Hudson Valley Bank and CUNY Law School.


• Co-Chair of Software and Business Methods Patents program at NYSBA International Law & Practice Section annual meeting, London, United Kingdom (October 2005).


• Co-Chair of Latin American Intellectual Property Issues program at NYSBA International Law & Practice Section annual meeting, Santiago, Chili (November 2004).


• Chair of United States/European Union Intellectual Property Protection Issues program at NYSBA International Law & Practice Section annual meeting, Rome, Italy (October 2002).


• "International Trademark Practice" Seminar for Trademark Paralegals, Half Moon Seminars (May 2001).


• Panel presentation on Electronic Signatures in United States and International Commerce at NYSBA International Law & Practice Section annual meeting, Rio de Janeiro, Brazil (October 2001).


• Chair of Intellectual Property Protection in Eastern European program at NYSBA International Law & Practice Section annual meeting, Budapest, Hungary (October 1999).

Significant Matters:

Litigation

• Successful litigation of numerous intellectual property disputes, including Rogers v. Koons (landmark Second Circuit copyright case involving infringement of published photograph by creating and selling a derivative sculpture. The case is considered one of the ten most significant art law cases of the Twentieth Century), and Elizabeth Taylor Cosmetics Co. v. Annick Goutal, Inc. (secured novel injunctive relief for French senior user of trademark "Passion" for perfume against sale and distribution of "Elizabeth Taylor's Passion" perfume).


• Supreme Court Amicus Brief for group of twenty photographers' and authors' organizations in New York Times v. Tasini (holding that, absent a license from the author, separate database use of free lance articles written for periodicals infringed the author's copyright).


• Litigation of antitrust matters, including (a) representation of linen supply industry member in Justice Department Antitrust Division criminal investigation and related civil cases, (b) representation of international chemical and pharmaceutical firm in Justice Department Antitrust Division investigation of dyestuffs industry, (c) litigation involving antitrust claims in food, and alcoholic beverage industries.

Intellectual Property

• Intellectual property aspects of major corporate transactions, including sale of financial industry database and data collection business to major financial data supplier, sales of technology driven businesses with significant international patent issues, and acting as special trademark counsel to a consortium of lenders in financing and acquisition of a worldwide food company and its subsidiaries, secured principally by the borrower's owned and licensed trademarks.


• Resolution of dispute between stock photography agency, motion picture studio and advertising agency over infringing use of National Geographic cover photograph in connection with promotion of motion picture.


• Successful trademark opposition proceeding in the French trademark office ("INPI") blocking registration for similar goods of a ".com" mark similar to our client's trademark, based on our client's European Community trademark registration.
• Pre-litigation settlements of numerous disputes over United States trademark use in the financial services industry.


• Representation of a security products firm in connection with a request to take a license under a third-party's patent, including review of patents for vehicle access controllers and electronic control system network and advice on whether a license under third-party's patent was necessary.


• Numerous license agreements of intellectual rights, including (a) license for rights under a foreign patent application and associated US PCT application for a special configuration CD-ROM, (b) license of a hedge fund performance index, related trade secrets and proprietary information, and trademark, between the index owner and developer, and an investment fund manager desiring to operate a fund designed to replicate the performance of the index, (c) software licenses for fixed income securities trading software (1) between owner-developer and major investment bank and (2) between owner-developer and marketer, both including complex provisions concerning intellectual property ownership, (d) trademark licenses involving the food and beverage industry and the garment industry, (e) license agreements for use of works of art on consumer products, and (f) license agreements for various uses of copyrights and other rights in designs of historically important pinball machines, including license to Microsoft for use of intellectual property in the creation and marketing of a "Pinball Arcade" computer game.


• Advising numerous clients on Internet-related matters, including (a) website development, hosting, terms and conditions of use and privacy policies, (b) advice on privacy issues, including EU Privacy Directive, (c) preparation of written and electronic user agreements with clients, vendors and distributors, for an Internet based system for the engagement and management of temporary workers and associated invoicing, (d) preparation of written and online user agreements, terms and conditions of use and privacy policy for website operated by international hedge fund administrator designed to allow selective access to hedge fund account information by investors, investors' counsel or accountant, and securities regulators, and (e) development agreement for co-branded website between internet-based staffing company and various umbrella organizations, including a large bank holding company.



Antitrust



• Antitrust and trade regulation advice in connection with numerous transactions and marketplace behavior issues.