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Intellectual Property Protection - The International Framework of Multilateral Agreements

(324 reviews)

Produced on October 21, 2019

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Course Information

Time 1h 4m
Difficulty Intermediate
Topics covered in this course: Intellectual Property

Course Description

How does counsel protect a client’s trademarks, copyrights, patents and other intellectual property as the client’s business grows internationally?  Join intellectual property attorney Donald Prutzman for an introduction to the network of international agreements governing intellectual property protection worldwide and a discussion of how to determine the most efficient and cost-effective ways to provide for international intellectual property protection.

Learning Objectives:

  1. Identify the basics of the principal multilateral agreements governing international intellectual property protection—The Paris Agreement, The Madrid Agreement and Protocol, The Pan-American Agreement, The Berne Agreement and The Patent Cooperation Treaty
  2. Recognize the alternatives to multilateral treaties for international property protection—individual country registrations; supra-national registrations
  3. Combine the available methods to structure effective, cost-efficient protection for a client’s intellectual property in the jurisdictions where it is needed

Credit Information

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L. Donald Prutzman

Tannenbaum Helpern Syracuse & Hirschtritt LLP

L. Donald Prutzman has a broad-based intellectual property and trade regulation practice that encompasses both litigation and non-litigated matters. Donald has broad experience in commercial litigation, particularly disputes involving trademark, copyright and antitrust issues. Other areas in which he is an experienced litigator include securities regulation and insurance coverage.

Donald's practice also includes a full range of non-litigated intellectual property matters including licensing, purchase and sale of intellectual property assets, copyright registration and trademark registration and prosecution, including representation of clients before the Trademark Trial and Appeal Board, and antitrust and trade regulation advice and compliance.

Donald has been selected for inclusion in New York Super Lawyers for 2008, 2009 and 2010.

Significant Matters:


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 and trade regulation advice in connection with numerous transactions and marketplace behavior issues.


Christopher R.

Great presentation covering all nuances regarding international protection of IP rights. Many thanks.

John R K.

Good visuals

Kathryn A.

thank you

T. O.

Good course. Mr. Prutzman is well organized and presented a coherent set of remarks on a complex subject!

Catherine D.

Wow! This presenter should be on national television, schooling us in this area.

Karen C.

Very informative! Well organized and easy to follow-highly recommend.

Philip H.

Presenter did a good job.

John D.

Very knowledgeable faculty and content was good...

Beth H.

Very interesting. Area I was unfamiliar with prior.

Debra S.

Nice summary of Treaties

Jessica B.

Covers a broad range of subjects

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