Practice Description
David Donahue is a Partner in the firm's litigation department. He litigates all manner of copyright, trademark, unfair competition, right of publicity and related commercial matters in federal and state trial and appellate courts. Mr. Donahue's practice spans a broad range of industries, from entertainment, fashion, and luxury goods to new media, software and financial services, among many others. He also negotiates and drafts commercial agreements relating to intellectual property matters, including intellectual property licenses, services agreements, and coexistence agreements.
Education
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.
Professional Activities
Clerkships: 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).
Member: Copyright Society of the U.S.A. (Board of Trustees); International Trademark Association (Enforcement Committee, Trade Names Subcommittee); Association of the Bar of the City of New York American Bar Association (Litigation Section); Federal Bar Council.
Speaker: 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; Table Topic: The Intersection of Trademark and Copyright Law in the U.S., INTA Annual Meeting, Berlin, Germany (May 20, 2008); Statutory Termination of Transfers, Practising Law Institute's Advanced Seminar on Copyright Law (May 12, 2008); Guerilla Cyber-Assaults: Protecting Your Brand on the Internet, Managing Intellectual Property Web Seminar, June 27, 2007; Back to Christopher Robin - Termination Rights, Copyright Society of the U.S.A., New York Chapter (moderator and speaker), January 2007; Calculating Damages in Copyright and Trademark Actions, New York State Bar Association, Entertainment, Art & Sports Law Section, Committee on Copyright & Trademark, November 2006; Copyright & Trademark Primer, Practising Law Institute, 2005; U.S. Copyright Implications for Works of Foreign Origin, Fross Zelnick Lehrman & Zissu, P.C., 2005; The Work for Hire Doctrine - U.S. and E.U. Law, Fross Zelnick Lehrman & Zissu, P.C., 2004.
Admissions
New York State
United States Court of Appeals for the Ninth Circuit
United States District Court for the Southern and Eastern Districts of New York
Selected Cases
David has participated in the following notable matters, among many others:
Entrepreneur Media, Inc. v. EYGN Ltd., Ernst & Young LLP and Ernst & Young Advisory, Inc., Case No.: SACV08-0608 DOC(MLGx) (C.D. Cal.); EYGN Limited and Ernst & Young LLP v. Entrepreneur Media Inc., No. 08-CIV-6734 (NRB) (S.D.N.Y.): 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. Obtained favorable settlement.
Copp v. Rayner Ramirez, John Hockenberry, Stone Phillips, NBC-Universal, Inc., Leslie Linthicum, John Grace, and Mike Miller, 874 N.Y.S.2d 52 (App. Div., 1st Dep't 2009) On behalf of documentary filmmaker defendants, 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.
Universal Music - MGB NA LLC v. Killersound, Inc., 07 CV 8353 (NRB) (S.D.N.Y.): Represented plaintiff music publisher in trademark infringement action against competitor. Obtained favorable settlement.
Video-Cinema-Films, Inc. v. The Lloyd E. Rigler–Lawrence E. Deutsch Foundation, No. 04 CV 5332 (S.D.N.Y., Oct. 6, 2006): Brought in after the liability phase to represent the defendant in a rare jury trial on statutory damages for copyright infringement. The jury awarded only $6,700.00 to the plaintiff when the plaintiff was seeking the statutory maximum of $150,000 for allegedly willful infringement. 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 we made immediately upon entering the case.
De Beers LV Trademark Ltd. v. DeBeers Diamond Syndicate Inc., 440 F. Supp. 2d 249 (S.D.N.Y. 2006): After a full trial we prevailed on behalf of the owners of U.S. rights in the world-famous DE BEERS trademark on their trademark infringement, trademark dilution and unfair competition claims.
Milne v. Stephen Slesinger, Inc., 430 F.3d 1036 (9th Cir. 2005), cert. denied, 126 S. Ct. 2969 (2006): We obtained summary judgment on the defendant's behalf, thwarting an attempt by Disney and the granddaughter of author A.A. Milne to terminate our client's copyright interest and royalty rights relating to Winnie-the-Pooh.
Photographic Illustrators Corp. v. The Gillette Co., No. 04-Civ-10913 (D. Mass.): We obtained partial summary judgment on Gillette's behalf in this dispute involving copyright infringement and breach of license agreement claims. The parties settled their remaining claims before trial.
Cavalier v. The Jim Henson Co., No. BC 251828 (Cal. Super. Ct.): On behalf of The Jim Henson Company, Viacom and Simon & Schuster we obtained summary adjudication on the plaintiffs' key claims in this idea submission dispute concerning various children's entertainment properties.
UMG Recordings, Inc. v. O'Rourke, 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.
Green Day, Inc. v. Miles-Bramwell Executive Services, Ltd., Opposition No. 91,174,725 (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. Obtained favorable settlement.
Advises and counsels foundation that owns rights in major works of famous artist on copyright and right of publicity matters.
Represents major hotel and resort company in numerous trademark and domain name conflicts.
Published Works
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
|
|
