Ranked in 1 Practice Areas

About

Provided by David Donahue

USA

Practice Areas

Trademark

Litigation

Copyright

Social Media & Domain Names

Design

Publicity & Privacy

Career

David Donahue brings the benefit of his extensive courtroom experience when advising clients on protection and enforcement issues relating to copyright, trademark, unfair competition, right of publicity, design patent, and related commercial matters. His commercial litigation experience also informs his approach to negotiating and drafting commercial agreements involving intellectual property matters. A former clerk to federal judges in both the Southern District of New York and the Second Circuit Court of Appeals, David has deep litigation experience in federal and state trial and appellate courts across the country, as well as in matters before the TTAB.

He advises and represents clients that reflect diverse sectors, including sports, fitness, hotels and resorts, food and beverage, fashion, music, and literary works.

As a member of the prestigious International Amicus Committee of INTA, David has co-authored INTA’s amicus briefs to the U.S. Supreme Court of the United States in Iancu v. Brunetti, Romag Fasteners, Inc. v. Fossil, Inc., and VIP Products LLC v. Jack Daniel’s Properties, Inc., three of the most significant trademark cases heard by the Court in recent history. David is also a member of the Copyright Society of the USA, the Federal Bar Council, and the New York City Bar Association’s Sports Committee.

Professional Memberships

International Trademark Association (International Amicus Committee, 2016-present; Right of Publicity Committee, 2020-22, 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 (Sports Law Committee; 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

Publications

International Comparative Legal Guide to Copyright 2021, contributed the U.S. chapter with Jason Jones

International Comparative Legal Guide to Copyright 2020, contributed the U.S. chapter with Jason Jones

International Comparative Legal Guide to Copyright 2019, contributed the U.S. chapter with Jason Jones

International Comparative Legal Guide to Copyright 2015, contributed the U.S. chapter

Supreme Court Rules on TTAB Preclusion, Managing IP, co-author with Jason Jones, May 2015

Industry Sector Expertise

Jack Daniel's Properties, Inc. v. VIP Products LLC

Co-authored U.S. Supreme Court brief in this matter submitted by the International Trademark Association (INTA) as amicus curiae. The case addresses the balance between the First Amendment and trademark law in the context of a dog toy imitating the trade dress and trademarks of Jack Daniel's.

Romag Fasteners Inc. v. Fossil Inc.

Co-authored U.S. Supreme Court brief in this matter submitted by the International Trademark Association (INTA) as amicus curiae. INTA’s brief argues that while willfulness is an important equitable factor in determining whether to require a trademark infringer to disgorge profits, it should not be treated as a prerequisite to profit disgorgement under Section 35 of the U.S. Trademark (Lanham) Act.

Iancu v. Brunetti

Co-authored the Supreme Court of the U.S. brief submitted by the International Trademark Association (INTA) as amicus curiae. INTA’s brief argues that Section 2(a) of the U.S. Trademark (Lanham) Act is unconstitutional under the First Amendment to the extent it prohibits registration of trademarks that constitute “immoral … or scandalous matter.”

Work Highlights

Represented famous luxury goods company in trademark and trade dress infringement litigation against sellers of 'knock-off' fragrance.

Obtained temporary restraining order and preliminary injunction on behalf of one of the world's largest hotel chains, preventing its licensee from de-branding a hotel in Cancun, Mexico pending arbitration of the parties' license dispute.

Represented a large children's clothing brand 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.

Represented a world-famous rock band in opposition proceedings before the Trademark Trial & Appeal Board of the U.S. Patent & Trademark Office. Negotiated settlement before trial.

Represented a world-renowned music publishing company in trademark infringement action against a competitor. Negotiated settlement before trial.

Represented a major cosmetics brand 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 a cosmetics product. Negotiated settlement before trial.

Photographic Illustrators Corp. v. The Gillette Co.

Obtained partial summary judgment on behalf of a major consumer products brand in a copyright infringement and breach of photography license agreement dispute, resulting in dismissal of plaintiff's request for $15 million in liquidated damages.

Education

St. John's University School of Law

JD, magna cum laude, St. Thomas More Institute Scholarship, Kenneth Wang Fellowship, Associate Editor of St. John's Law Review

1998

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Intellectual Property: Trademark, Copyright & Trade Secrets

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Leisure and Hospitality

Technology, Media and Telecoms (TMT)

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