Partner prutzman@thsh.com 212-508-6739 LinkedIn Twitter
Practice Areas
Areas of Focus
- Intellectual Property Law
- Antitrust and Trade Regulation
- Trademark, Copyright and Patent Litigation
- Arts & Media
- Commercial Litigation
- Retail
Industries
L. Donald Prutzman
Partner prutzman@thsh.com 212-508-6739 LinkedIn Twitter
Practice Areas
Areas of Focus
- Intellectual Property Law
- Antitrust and Trade Regulation
- Trademark, Copyright and Patent Litigation
- Arts & Media
- Commercial Litigation
- Retail
Industries
L. Donald Prutzman
Partner prutzman@thsh.com 212-508-6739 LinkedIn Twitter
Practice Areas
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.
Case Studies
- Acquisition of Beer Distribution Business in New Jersey
- Obtained Injunction Against Competitor’s Misrepresentation of Status as Authorized Distributor
- Acquisition of Intellectual Property Assets of Australian Manufacturer and Distributor of Key Trademarked Product
- Representing a Life Science Company with Global Licensing Agreement with a Major Generic Pharmaceutical Company
- Defended Textile Industry Client in Patent Infringement Action
- Negotiating a Complex Trademark and Copyright License Agreement for Fabrics and Related Products
- Defense of An Investment Management Firm in Complex Trademark Infringement Case
- Tannenbaum Helpern tapped to serve as arbitrator in reviewing the conflicting decisions concerning new gTLD.com
- Secured preliminary injunction against trademark infringer
- Secured an injunction against infringement of copyright in client’s photograph
- Stopped infringement of client’s design patent by a foreign firm
Publications
- Distribution & Agency 2024 - United States
- U.S. Supreme Court: Unintentional mistake of law does not invalidate copyright registration
- US Supreme Court Holds Willfulness is Not Required to Award Infringing Profits in Trademark Cases
- Distribution & Agency 2020 – United States
- Distribution & Agency 2019 – United States
- Are Your Website and Privacy Policy GDPR Compliant?
- GoDaddy the latest to leave S3 Bucket Unsecured
- Distribution & Agency 2018 - Q&A on the distribution of goods and services in 18 jurisdictions worldwide
- Disparaging or offensive trade mark registrations in the United States—are there any limits after the US Supreme Court’s decision in Matal v Tam?
- Can a Licensing Agent Also Enforce the Copyright in Licensed Works?
- Global Ransomware Attack: Basic Security Measures Every Business Should Adopt
- New Guidance for Human Resource Professionals to Avoid Antitrust Violations
- Companies Must Account for New Law Protecting Confidential Information
News
- Super Lawyers® Names 36 Tannenbaum Helpern Attorneys in 2024 New York City Metro Rankings • 10.24.2024
- Best Lawyers® Recognizes 24 Tannenbaum Helpern Attorneys in 2025 New York City Metro Rankings • 08.15.2024
- Tannenbaum Helpern Attorneys Published in Lexology Panoramic on Distribution and Agency: Global Overview and USA • 03.08.2024
- Best Lawyers® Ranks 13 Tannenbaum Helpern Attorneys to 2023 New York City Metro Rankings • 08.17.2022
- 35 Tannenbaum Helpern attorneys recognized in Super Lawyers 2020 • 10.29.2020
- Best Lawyers 2021 recognizes 13 Tannenbaum Helpern attorneys • 08.26.2020
- 30 Tannenbaum Helpern attorneys recognized in Super Lawyers 2019 • 10.17.2019
- Best Lawyers 2020 recognizes nine Tannenbaum Helpern attorneys • 08.22.2019
- 26 Tannenbaum Helpern attorneys recognized in the 2018 New York Metro Super Lawyers list • 10.22.2018
- Eight Tannenbaum Helpern attorneys selected to The Best Lawyers in America© 2019 • 08.20.2018
- 27 Tannenbaum Helpern Attorneys Recognized In The 2017 New York Metro Super Lawyers List • 09.20.2017
- 28 Tannenbaum Helpern Attorneys Selected To The 2016 New York Metro Super Lawyers List • 09.27.2016
- 27 Tannenbaum Helpern Attorneys Selected To The 2015 New York Metro Super Lawyers List • 09.17.2015
- Tannenbaum Helpern Recognized As Top Ranked US Law Firm • 04.13.2015
- 34 Tannenbaum Helpern Attorneys Have Been Selected To The 2014 New York Metro Super Lawyers List, Including Two Commercial Litigators In The Top 100 Super Lawyers List • 10.08.2014
- THSH Recognized In Super Lawyers, Best Lawyers, Avenue Magazine, Fortune, Lawyers World, The American Lawyer & Corporate Counsel • 10.02.2012
- 18 Tannenbaum Helpern Attorneys On The New York Metro Super Lawyers 2011 List • 10.25.2011
Events
- Conversations with Chief IP Officers: Illuminating Insights and Perspectives - Global IP ConfEx • 10.23.2024
- Reading the Room Without Even Being in the Room—Online Dispute Resolution from the Mediator’s Perspective | International Trademark Association • 11.17.2021
- Intellectual Property Protection - The International Framework of Multilateral Agreements • 10.21.2019
- International Bridging the Gap 2019 • 06.17.2019
- Financial Poise webinar, Choosing & Protecting Your Brand • 09.12.2018
- Copyright and Trademark Developments: What to Expect in 2017 • 12.06.2016
- New York State Bar Association International Section • 10.19.2016
- International Intellectual Property Practice Panel • 03.16.2016
- New York State Bar Association International Section: Brazil’s Recent Developments And Opportunities For Latin America Amidst Global Challenges • 10.14.2015
- A Guide to Introducing International Products and Services to the U.S. Market • 05.13.2015
- Drafting an International Contract • 05.12.2015
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.
- Acquisition of Beer Distribution Business in New Jersey
- Obtained Injunction Against Competitor’s Misrepresentation of Status as Authorized Distributor
- Acquisition of Intellectual Property Assets of Australian Manufacturer and Distributor of Key Trademarked Product
- Representing a Life Science Company with Global Licensing Agreement with a Major Generic Pharmaceutical Company
- Defended Textile Industry Client in Patent Infringement Action
- Negotiating a Complex Trademark and Copyright License Agreement for Fabrics and Related Products
- Defense of An Investment Management Firm in Complex Trademark Infringement Case
- Tannenbaum Helpern tapped to serve as arbitrator in reviewing the conflicting decisions concerning new gTLD.com
- Secured preliminary injunction against trademark infringer
- Secured an injunction against infringement of copyright in client’s photograph
- Stopped infringement of client’s design patent by a foreign firm
- Distribution & Agency 2024 - United States
- U.S. Supreme Court: Unintentional mistake of law does not invalidate copyright registration
- US Supreme Court Holds Willfulness is Not Required to Award Infringing Profits in Trademark Cases
- Distribution & Agency 2020 – United States
- Distribution & Agency 2019 – United States
- Are Your Website and Privacy Policy GDPR Compliant?
- GoDaddy the latest to leave S3 Bucket Unsecured
- Distribution & Agency 2018 - Q&A on the distribution of goods and services in 18 jurisdictions worldwide
- Disparaging or offensive trade mark registrations in the United States—are there any limits after the US Supreme Court’s decision in Matal v Tam?
- Can a Licensing Agent Also Enforce the Copyright in Licensed Works?
- Global Ransomware Attack: Basic Security Measures Every Business Should Adopt
- New Guidance for Human Resource Professionals to Avoid Antitrust Violations
- Companies Must Account for New Law Protecting Confidential Information
- Super Lawyers® Names 36 Tannenbaum Helpern Attorneys in 2024 New York City Metro Rankings • 10.24.2024
- Best Lawyers® Recognizes 24 Tannenbaum Helpern Attorneys in 2025 New York City Metro Rankings • 08.15.2024
- Tannenbaum Helpern Attorneys Published in Lexology Panoramic on Distribution and Agency: Global Overview and USA • 03.08.2024
- Best Lawyers® Ranks 13 Tannenbaum Helpern Attorneys to 2023 New York City Metro Rankings • 08.17.2022
- 35 Tannenbaum Helpern attorneys recognized in Super Lawyers 2020 • 10.29.2020
- Best Lawyers 2021 recognizes 13 Tannenbaum Helpern attorneys • 08.26.2020
- 30 Tannenbaum Helpern attorneys recognized in Super Lawyers 2019 • 10.17.2019
- Best Lawyers 2020 recognizes nine Tannenbaum Helpern attorneys • 08.22.2019
- 26 Tannenbaum Helpern attorneys recognized in the 2018 New York Metro Super Lawyers list • 10.22.2018
- Eight Tannenbaum Helpern attorneys selected to The Best Lawyers in America© 2019 • 08.20.2018
- 27 Tannenbaum Helpern Attorneys Recognized In The 2017 New York Metro Super Lawyers List • 09.20.2017
- 28 Tannenbaum Helpern Attorneys Selected To The 2016 New York Metro Super Lawyers List • 09.27.2016
- 27 Tannenbaum Helpern Attorneys Selected To The 2015 New York Metro Super Lawyers List • 09.17.2015
- Tannenbaum Helpern Recognized As Top Ranked US Law Firm • 04.13.2015
- 34 Tannenbaum Helpern Attorneys Have Been Selected To The 2014 New York Metro Super Lawyers List, Including Two Commercial Litigators In The Top 100 Super Lawyers List • 10.08.2014
- THSH Recognized In Super Lawyers, Best Lawyers, Avenue Magazine, Fortune, Lawyers World, The American Lawyer & Corporate Counsel • 10.02.2012
- 18 Tannenbaum Helpern Attorneys On The New York Metro Super Lawyers 2011 List • 10.25.2011
- Conversations with Chief IP Officers: Illuminating Insights and Perspectives - Global IP ConfEx • 10.23.2024
- Reading the Room Without Even Being in the Room—Online Dispute Resolution from the Mediator’s Perspective | International Trademark Association • 11.17.2021
- Intellectual Property Protection - The International Framework of Multilateral Agreements • 10.21.2019
- International Bridging the Gap 2019 • 06.17.2019
- Financial Poise webinar, Choosing & Protecting Your Brand • 09.12.2018
- Copyright and Trademark Developments: What to Expect in 2017 • 12.06.2016
- New York State Bar Association International Section • 10.19.2016
- International Intellectual Property Practice Panel • 03.16.2016
- New York State Bar Association International Section: Brazil’s Recent Developments And Opportunities For Latin America Amidst Global Challenges • 10.14.2015
- A Guide to Introducing International Products and Services to the U.S. Market • 05.13.2015
- Drafting an International Contract • 05.12.2015