Donald Prutzman 8x10

 

L. Donald Prutzman

Partner prutzman@thsh.com 212-508-6739 LinkedIn Twitter

Areas of Focus

  • Intellectual Property Law
  • Antitrust and Trade Regulation
  • Trademark, Copyright and Patent Litigation
  • Arts & Media
  • Commercial Litigation
  • Retail

Industries

Donald Prutzman 8x10

L. Donald Prutzman

Partner prutzman@thsh.com 212-508-6739 LinkedIn Twitter

Areas of Focus

  • Intellectual Property Law
  • Antitrust and Trade Regulation
  • Trademark, Copyright and Patent Litigation
  • Arts & Media
  • Commercial Litigation
  • Retail

Industries

Donald Prutzman 8x10

L. Donald Prutzman

Partner prutzman@thsh.com 212-508-6739 LinkedIn Twitter

Areas of Focus

  • Intellectual Property Law
  • Antitrust and Trade Regulation
  • Trademark, Copyright and Patent Litigation
  • Arts & Media
  • Commercial Litigation
  • Retail

Industries

Biography

L. Donald Prutzman is a partner in Tannenbaum Helpern's Intellectual Property practice. His practice encompasses litigation and non-litigated matters. He has broad trial and appellate litigation experience, particularly in disputes involving trademark, copyright, art law, photographers' rights, apparel importation, antitrust issues and matters before the International Trade Commission. His litigation experience includes securities regulation and insurance coverage.

Donald advises on a wide range of non-litigated intellectual property matters including licensing; purchase and sale of intellectual property assets; website development, hosting and content; data licensing agreements; copyright registration; worldwide trademark registration and prosecution which includes representing clients before the Trademark Trial and Appeal Board, and antitrust and trade regulation advice and compliance. Representing clients from across industries, Donald has developed a particular focus in the following industry sectors: financial services, fashion, food and beverage, jewelry design, publishing, entertainment, and art and antiques.

In addition, Donald’s practice areas include Tannenbaum Helpern’s growing Cybersecurity and Data Privacy practice, an interdisciplinary team with experience in the many facets of this important area, including technology issues, cybersecurity and data privacy regulation and compliance, data breach planning and response and dispute resolution. He has helped guide clients in complying with the varying regulations of data privacy and protection in the U.S., Europe and other jurisdictions around the world, and in responding to data security breaches.

As a member of the American Arbitration Association's Panel of Neutrals, the International Center for Dispute Resolution’s Panel of Neutrals, the World Intellectual Property Organization’s Panel of Neutrals, the International Trademark Association’s Panel of Trademark Mediators, the Eastern District of New York’s Panel of Arbitrators, and the FINRA Panel of Arbitrators, Donald serves as an arbitrator and mediator in intellectual property, financial and other commercial matters. He is also a Member of the Chartered Institute of Arbitrators. A frequent speaker and author on intellectual property topics, Donald has been selected for inclusion in Super Lawyers® for the New York Metro Area in 2007 and every year since 2009 in their practice areas of Intellectual Property, Alternative Dispute Resolution, Antitrust Litigation, and International. He has also been selected for inclusion in Best Lawyers® in America for Copyright Law since 2019.

When not practicing law, Donald enjoys cruising in, and working on, his verde green 1965 Buick Skylark convertible (with the 410 Wildcat V8).

New York University (J.D.)

Harvard College (A.B.)

  • Honors: cum laude
  • Associate, Cravath Swaine & Moore
  • Partner, Stecher Jaglom & Prutzman
  • Law Clerk, United States District Court, Eastern District of Pennsylvania
  • New York
  • Georgia
  • Pennsylvania
  • United States Supreme Court
  • United States Courts of Appeals for the Federal Circuit
  • United States Courts of Appeals for the Second Circuit
  • United States Courts of Appeals for the Third Circuit
  • United States Courts of Appeals for the Ninth Circuit
  • United States Courts of Appeals for the Eleventh Circuit
  • United States Court of Appeals for the District of Columbia Circuit
  • United States District Court for the Eastern Districts of New York
  • United States District Court for the Southern Districts of New York
  • United States District Court for the Eastern District of Pennsylvania
  • Best Lawyers®, Copyright Law (2019-2024)
  • Super Lawyers® New York Metro Area, Intellectual Property; Alternative Dispute Resolution; Antitrust Litigation; International (2007, 2009-2024)
  • Avenue Magazine's Legal Elite (2012)
  • Fortune's Magazine Top Ranked IP Attorneys (2012)
  • Martindale-Hubbell AV Preeminent Rating

Professional:

  • New York State Bar Association (Co-Chair Intellectual Property Sub-Committee, International Law and Practice Section)
  • Vice President and Director, Respect for Law Alliance
  • Member, Mediation Panel, United States District Court for the Eastern District of New York
  • International Trademark Association - U.S. Subcommittee of the Parallel Imports Committee
  • American Arbitration Association Panel of Neutrals
  • Singapore International Arbitration Center Panel of Neutrals (Intellectual Property and Technology)

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.
Martindale Hubbell
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News

L. Donald Prutzman is a partner in Tannenbaum Helpern's Intellectual Property practice. His practice encompasses litigation and non-litigated matters. He has broad trial and appellate litigation experience, particularly in disputes involving trademark, copyright, art law, photographers' rights, apparel importation, antitrust issues and matters before the International Trade Commission. His litigation experience includes securities regulation and insurance coverage.

Donald advises on a wide range of non-litigated intellectual property matters including licensing; purchase and sale of intellectual property assets; website development, hosting and content; data licensing agreements; copyright registration; worldwide trademark registration and prosecution which includes representing clients before the Trademark Trial and Appeal Board, and antitrust and trade regulation advice and compliance. Representing clients from across industries, Donald has developed a particular focus in the following industry sectors: financial services, fashion, food and beverage, jewelry design, publishing, entertainment, and art and antiques.

In addition, Donald’s practice areas include Tannenbaum Helpern’s growing Cybersecurity and Data Privacy practice, an interdisciplinary team with experience in the many facets of this important area, including technology issues, cybersecurity and data privacy regulation and compliance, data breach planning and response and dispute resolution. He has helped guide clients in complying with the varying regulations of data privacy and protection in the U.S., Europe and other jurisdictions around the world, and in responding to data security breaches.

As a member of the American Arbitration Association's Panel of Neutrals, the International Center for Dispute Resolution’s Panel of Neutrals, the World Intellectual Property Organization’s Panel of Neutrals, the International Trademark Association’s Panel of Trademark Mediators, the Eastern District of New York’s Panel of Arbitrators, and the FINRA Panel of Arbitrators, Donald serves as an arbitrator and mediator in intellectual property, financial and other commercial matters. He is also a Member of the Chartered Institute of Arbitrators. A frequent speaker and author on intellectual property topics, Donald has been selected for inclusion in Super Lawyers® for the New York Metro Area in 2007 and every year since 2009 in their practice areas of Intellectual Property, Alternative Dispute Resolution, Antitrust Litigation, and International. He has also been selected for inclusion in Best Lawyers® in America for Copyright Law since 2019.

When not practicing law, Donald enjoys cruising in, and working on, his verde green 1965 Buick Skylark convertible (with the 410 Wildcat V8).

New York University (J.D.)

Harvard College (A.B.)

  • Honors: cum laude
  • Associate, Cravath Swaine & Moore
  • Partner, Stecher Jaglom & Prutzman
  • Law Clerk, United States District Court, Eastern District of Pennsylvania
  • New York
  • Georgia
  • Pennsylvania
  • United States Supreme Court
  • United States Courts of Appeals for the Federal Circuit
  • United States Courts of Appeals for the Second Circuit
  • United States Courts of Appeals for the Third Circuit
  • United States Courts of Appeals for the Ninth Circuit
  • United States Courts of Appeals for the Eleventh Circuit
  • United States Court of Appeals for the District of Columbia Circuit
  • United States District Court for the Eastern Districts of New York
  • United States District Court for the Southern Districts of New York
  • United States District Court for the Eastern District of Pennsylvania
  • Best Lawyers®, Copyright Law (2019-2024)
  • Super Lawyers® New York Metro Area, Intellectual Property; Alternative Dispute Resolution; Antitrust Litigation; International (2007, 2009-2024)
  • Avenue Magazine's Legal Elite (2012)
  • Fortune's Magazine Top Ranked IP Attorneys (2012)
  • Martindale-Hubbell AV Preeminent Rating

Professional:

  • New York State Bar Association (Co-Chair Intellectual Property Sub-Committee, International Law and Practice Section)
  • Vice President and Director, Respect for Law Alliance
  • Member, Mediation Panel, United States District Court for the Eastern District of New York
  • International Trademark Association - U.S. Subcommittee of the Parallel Imports Committee
  • American Arbitration Association Panel of Neutrals
  • Singapore International Arbitration Center Panel of Neutrals (Intellectual Property and Technology)

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.
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