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David Donahue is a Partner in our litigation department. He litigates copyright, trademark, unfair competition, right of publicity, design patent and related commercial matters in federal and state trial and appellate courts. David's practice spans a broad range of industries, including music, film, art, hotels & resorts, luxury goods, and new media, among many others. He also negotiates and drafts commercial agreements relating to intellectual property matters.
University of Michigan (B.A., 1994); St. John's University School of Law (J.D., magna cum laude, 1998); St. Thomas More Institute Scholarship; Kenneth Wang Fellowship; Associate Editor, St. John's Law Review.
Law Clerk to the Honorable Joseph M. McLaughlin, Circuit Judge, United States Court of Appeals for the Second Circuit (2001-2002); Law Clerk to the Honorable Milton Pollack, District Judge, United States District Court for the Southern District of New York (1998-1999).
International Trademark Association (International Amicus Committee, 2016-present; past member of Internet Committee and Enforcement Committee); Federal Bar Council (Intellectual Property Committee, 2014-Present); Association of the Bar of the City of New York (past member of Copyright & Literary Property Committee and Entertainment Law Committee); Copyright Society of the U.S.A. (past Assistant Secretary, co-chair of Membership Committee, co-chair of Annual Meeting Committee and member of the Board of Trustees); American Bar Association.
New York State
United States Court of Appeals for the Second, Ninth and Federal Circuits
United States District Court for the Southern and Eastern Districts of New York
David frequently conducts customized in-house CLE programs for clients on topics of interest relating to copyright, trademark, right of publicity and internet law. Examples of his public speaking engagements include the following: News Flash–Garcia v. Google, Copyright Society of the U.S.A. Annual Meeting, June 9, 2015; Supreme Court–IP Year in Review, New York State Bar Association IP Section Annual Meeting, February 9, 2015; Calculating Damages in Copyright and Trademark Infringement Cases, Nevada Bar Association, IP Law Conference, November 1, 2013; Litigating a Trademark Dispute: Popular Motion Practice Strategies, Association of the Bar of the City of New York, May 12, 2009; Current Developments in Copyright Law: Termination After Superman & Steinbeck, Association of the Bar of the City of New York, March 12, 2009; Statutory Termination of Transfers, Practising Law Institute's Advanced Seminar on Copyright Law (May 12, 2008).
Counsel leading premium music video and entertainment company on trademark and domain-name matters.
Counsel foundation that owns rights in major works of famous artist on trademark, copyright and right of publicity matters.
Counsel luxury hotels and resorts company on trademark, copyright and right of publicity matters.
Counseled major motion picture studio on issues relating to termination of transfers under the Copyright Act of 1976.
2018 WL 3529479, Opp. No. 91200616, Canc. No. 92053622 (T.T.A.B. July 19, 2018).
After a seven-year battle before the Trademark Trial and Appeal Board of the U.S. Patent & Trademark Office, the Firm prevailed on behalf of client UMG Recordings, Inc. (“UMG”)—owner of the JACKSON 5 trademark—in its challenge to an attempt to register the mark J5 for clothing and related merchandise by Siggy Music, Inc., a company owned by original Jackson 5 musical group member Sigmund Esco “Jackie” Jackson. In a lengthy decision dated July 19, 2018, the Board confirmed that UMG, as successor to Motown Records, owned the JACKSON 5 trademark as well as its functional equivalents, including the short form J5. It further held that UMG’s JACKSON 5 trademark is “famous” and “commercially strong” and that Siggy Music’s use and registration of J5 would likely cause confusion in the marketplace.
819 F.3d 697 (4th Cir. 2016)
Coauthored an amicus brief submitted to the U.S. Supreme Court on behalf of the International Trademark Association (INTA) in support of the petition for a writ of certiorari seeking review of the U.S. Court of Appeals for the Fourth Circuit's decision in the FLANAX case. In the brief, INTA urged the Supreme Court to grant the petition so that it could resolve a split among various U.S. circuit courts as to whether and under what circumstances a foreign trademark owner who does not use its mark in the U.S. has standing to object to the use and registration of the mark by another in the U.S.
No. 13 CIV. 2493 KBF, 2014 WL 1317301 (S.D.N.Y. Feb. 3, 2014)
On behalf of Plaintiff Regulatory Fundamentals Group LLC (“RFG”), we and our co-counsel defeated the Defendants’ motion for summary judgment seeking dismissal of RFG’s copyright infringement and copyright management information claims based on Defendants’ use of RFG’s copyrighted works beyond the terms of a limited copyright license. The Court eventually entered judgment in RFG’s favor due to Defendants’ massive spoliation of evidence and awarded RFG attorneys’ fees and costs amounting to $366,099.81.
No. 13-cv-07371-RA (S.D.N.Y.)
Represented Prada S.A. (“Prada”) in trademark and trade dress infringement litigation against sellers of PARTY CANDY perfume, a “knock-off” of Prada’s PRADA CANDY fragrance.
No. 12-cv-1986 (S.D.N.Y. 2013)
Represented Defendant Boundless Learning, Inc. (“Boundless”) in a recently settled case in the U.S. District Court for the Southern District of New York brought by three publishers of college-level textbooks in biology, economics and psychology, respectively. The publishers claimed Boundless infringed Plaintiffs’ copyrights in violation of the U.S. Copyright Act and engaged in unfair competition and false advertising under the U.S. Trademark Act by creating free, electronic textbooks for students that covered the same factual concepts and topics as Plaintiffs’ textbooks and were marketed as alternatives to their products.
No. 12 Civ. 1192 (S.D.N.Y.)
Represented Plaintiff Edgar Rice Burroughs, Inc. (“ERB”), owner of all existing copyright and trademark rights relating to the literary works of Edgar Rice Burroughs, including the TARZAN and JOHN CARTER OF MARS series of stories. In the case, ERB claimed that the defendant comic book publishers who were using the marks LORD OF THE JUNGLE and WARLORD OF MARS (among others) for comic book series based on the TARZAN and JOHN CARTER OF MARS stories were liable for (i) trademark infringement and unfair competition under the U.S. Trademark (Lanham) Act and related state laws, and (ii) copyright infringement under the laws of the United Kingdom, France and the Netherlands. The parties settled their claims before trial.
Index No. 603350/2008, Slip Op. (N.Y. Sup. Aug. 4, 2011)
The firm obtained partial summary judgment dismissing the plaintiff's entire $5.6 million claim for damages against our client Universal Music Corp. d/b/a Universal Music Publishing Group ("UMPG") in a license dispute concerning a celebrity fragrance for Prince, the famous recording artist.
Opp. No. 91189827, 2010 WL 325956 (T.T.A.B. Jan 21, 2010) (summary judgment); 2010 WL 1619443 (T.T.A.B. Apr. 7, 2010) (reconsideration)
We successfully represented Edgar Rice Burroughs, Inc. (ERB)--successor to the famous author of the Tarzan and John Carter of Mars stories--in overcoming an opposition to its application to register the mark JOHN CARTER OF MARS for a variety of toys and games.
No. 10 Civ. 9428 (PKC) (S.D.N.Y. 2010)
Obtained temporary restraining order and preliminary injunction on behalf of plaintiff, owner of the LE MERIDIEN mark for hotels, preventing its licensee from de-branding the LE MERIDIEN hotel in Cancun, Mexico pending arbitration of the parties' license dispute.
No. 600561/10 (N.Y. Sup.)
Datascope Corp. v. Mindray DS USA, Inc., Mindray Medical International Limited, and Shenzhen Mindray Bio-Medical Electronics Co. Ltd., No. 11-CV-3488 (VM) (S.D.N.Y.): Represented one of the world's largest manufacturers of patient monitoring equipment and its affiliates in breach of license and trademark infringement litigation brought by its licensor. Successfully defended against preliminary injunction motion seeking termination of trademark license and against summary judgment motion seeking specific performance and cease of manufacture of products by defendants' affiliate in China. Negotiated settlement before trial.
874 N.Y.S.2d 52 (App. Div., 1st Dep't 2009)
On behalf of documentary filmmaker defendants, the Firm successfully defended appeal of lower court's dismissal of plaintiffs' defamation claims for lack of personal jurisdiction. The appellate court also affirmed lower court's dismissal on merits of plaintiffs' claims against codefendants arising out of allegedly defamatory statements in Dateline NBC telecast entitled "Rescue or Ripoff," which investigated whether plaintiff Doug Copp was a hero or had sought to capitalize on the 9/11 tragedy by gaining access to Ground Zero under false pretenses, and by obtaining $600,000 payment from 9/11 Victim Compensation Fund for illnesses supposedly caused by exposure to toxic chemicals at Ground Zero.
92 U.S.P.Q.2d 1042 (T.T.A.B. 2009)
On behalf of UMG Recordings, Inc., owner of the world-famous MOTOWN mark and music label, we successfully opposed the applicant's attempt to register MTOWN CLOTHING (and design) as a trademark for clothing.
874 N.Y.S.2d 52 (App. Div., 1st Dep't 2009)
Successfully defended against appeal of lower court's dismissal of plaintiff's defamation claims against documentary filmmaker defendants in case arising out of allegedly defamatory statements in Dateline NBC telecast entitled, "Rescue or Ripoff," which investigated whether plaintiff used false pretenses to gain access to Ground Zero during 9/11 rescue efforts and fraudulently obtained $600,000 payment from 9/11 Victim Compensation Fund.
No. 09 CV 5247 (PAC) (S.D.N.Y.)
Represented plaintiffs in design patent and trademark infringement litigation arising out of defendants' infringement of plaintiff's back-pocket stitching design for children's jeans. Negotiated settlement before trial.
Case No. SA-CV-08-0608 DOC (MLGx), 2008 WL 11338010 (C.D. Cal. Dec. 17, 2008)
In a trademark case concerning the ENTREPRENEUR OF THE YEAR mark, the Firm won a motion to dismiss declaratory judgment action against one Ernst & Young ("E&Y") party for lack of personal jurisdiction, and won motion to transfer the action against the remaining E&Y parties and consolidate with E&Y's infringement action in New York, ultimately leading to a favorable settlement for our clients.
Opposition No. 91174725 (T.T.A.B.)
Represented world-famous rock band in opposition proceedings before the Trademark Trial & Appeal Board of the U.S. Patent & Trademark Office. Negotiated settlement before trial.
No. 08-CIV-6734 (NRB) (S.D.N.Y.); No.: SACV08-0608 DOC(MLGx) (C.D. Cal.)
Represented Ernst & Young LLP and related entities in dueling declaratory judgment and trademark infringement actions filed on the East and West coasts. Secured a dismissal for lack of personal jurisdiction over one defendant and a transfer of the declaratory judgment action against the remaining defendants. Negotiated settlement of remaining claims before trial.
07 CV 8353 (NRB) (S.D.N.Y.)
Represented plaintiff music publisher in trademark infringement action against competitor. Negotiated settlement before trial.
No. CV 09 08711 PSW (C.D. Cal.)
Represented defendant in right of publicity and unfair competition action arising out of defendant's use of a photograph of Albert Einstein in a tongue-in-cheek advertisement for cosmetics product. Negotiated settlement before trial.
No. 04 CV 5332 (S.D.N.Y., Oct. 6, 2006)
We were brought in after the liability phase to represent the defendant in a rare jury trial on statutory damages for copyright infringement. Before we became involved in the case, our client, a nonprofit charitable foundation, was found liable for copyright infringement based on the defendant's use in its Classic Arts Showcase television programming of a short clip from the 1947 movie Carnegie Hall. The plaintiff sought a finding of willful infringement, which would have permitted an award up to $150,000.00. But we persuaded the jury that our client did not act willfully, and the jury awarded only $6,700.00 to the plaintiff. This judgment was cut in half by an award of costs to our client because the judgment did not exceed the Rule 68 Offer of Judgment made on our client's behalf immediately upon our entering the case.
440 F. Supp. 2d 249 (S.D.N.Y. 2006)
The firm won a trial before the United States District Court for the Southern District of New York on behalf of plaintiffs De Beers LV Limited and De Beers LV Trademark Limited, owners of rights in the famous DE BEERS mark. Calling the DE BEERS mark "one of the most famous brands in the world," the District Court ruled that the defendants' attempt to use the DE BEERS name to sell diamonds over the Internet was "entirely in bad faith" and accordingly found the defendants liable for trademark infringement, trademark dilution and unfair competition.
430 F.3d 1036 (9th Cir. 2005), cert. denied, 126 S. Ct. 2969 (2006)
In the first judicial treatment of the new termination right enacted in the U.S. Copyright Term Extension Act of 1998, 17 U.S.C. § 304 (d), the U.S. Court of Appeals for the Ninth Circuit affirmed the District Court's decision rejecting an attempt by Disney and Clare Milne to cut off client Stephen Slesinger, Inc.'s right to receive royalties relating to Winnie the Pooh. The court held that Milne could not terminate a 1930 grant where the parties in 1983 had mutually revoked that grant and substituted a new one that was not subject to termination for significantly increased compensation to the author's heirs. The firm also represented Slesinger in successfully opposing Milne's Petition for a Writ of Certiorari filed in the U.S. Supreme Court. In February 2007, on the same theory we also successfully obtained a dismissal for Slesinger of an attempted termination action brought by the granddaughter of the illustrator of the Pooh works.
No. BC 251828 (Cal. Super. Ct. Jan. 5, 2004)
We won summary adjudication on behalf of defendants, The Jim Henson Company, Simon & Schuster, Inc. and Viacom Inc., in an idea submission case brought by two individuals in Los Angeles Superior Court.
No. 04-Civ-10913 (D. Mass.)
Obtained partial summary judgment on Gillette's behalf in this copyright infringement and breach of photography license agreement dispute, resulting in dismissal of plaintiff's request for $15 million in liquidated damages. The parties settled their remaining claims before trial.
Supreme Court Rules on TTAB Preclusion
David Donahue and Jason Jones explain the recent U.S. Supreme Court's ruling in B&B Hardware, Inc. v Hargis Industries, Inc. in the May 2015 edition of Managing Intellectual Property.
David Donahue contributes the U.S. chapter to The International Comparative Legal Guide: Copyright 2015
David Donahue contributed the United States chapter to The International Comparative Legal Guide: Copyright 2015. The chapter provides an overview of United States law concerning copyright subsistence, ownership, enforcement and exploitation, among other copyright-related topics. This article appeared in the 2015 edition of The International Comparative Legal Guide to: Copyright; published by Global Legal Group Ltd, London.
Recent Copyright and Trademark Decisions Analyzed
Managing Intellectual Property: World IP Contacts Handbook 2006; ABA Section of International Law, International Intellectual Property Committee, 2005 Year in Review