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Ted Max

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Theodore C. Max is a partner in the Entertainment, Technology and Advertising and Intellectual Property Practice Groups in the New York office.

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On June 8, 2023, the Supreme Court in a unanimous decision held that a trademark claim concerning “a squeaky, chewable dog toy designed to look like a bottle of Jack Daniels whiskey” which, as a play on words, turns the words “Jack Daniels” into “Bad Spaniels” and the descriptive phrase “Old No. 7 Brand Tennessee Sour Mash Whiskey” into “The Old No. 2 On Your Tennessee Carpet” does not receive special First Amendment treatment where the accused infringer used the trademarks at issue to designate the source of its own goods and that, with respect to a Lanham Act dilution by tarnishment claim, “[t]he use of a mark does not count as noncommercial just because it parodies, or otherwise comments on, another’s products.”[1]Continue Reading Supreme Court Rules “That Dog Don’t Hunt”: Bad Spaniels Toy’s Use of JACK DANIELS Marks is a Poor Parody and Dilution Act Applies

On May 18, 2023, the United States Supreme Court ruled in favor of famed rock photographer Lynn Goldsmith against the Andy Warhol Foundation for the Visual Arts, Inc.’s (AWF),[1] in a long-awaited decision impacting fair use under Section 107(1) of the Copyright Act. The opinion written by Justice Sotomayor, in which Justices Thomas, Alito, Gorsuch, Kavanaugh, Barrett and Jackson joined, held that the “purpose and character” of AWF’s commercial use of Warhol’s portraits of Prince shared the same commercial purpose of the original photograph taken by Ms. Goldsmith and, as a result, did not constitute fair use.[2] The Court’s decision affirmed the ruling of the Second Circuit Court of Appeals, which held that the Warhol work was derivative of the original, and noted that “the new expression may be relevant to whether a copying use has a sufficiently distinct purpose or character” but that factor was not dispositive by itself.[3] The Court found that the Warhol Foundation’s licensing of the Orange Prince to Conde Nast did not have a sufficiently different purpose as the Goldsmith photograph because both were “portraits of Prince used in magazines to illustrate stories about Prince.”[4]Continue Reading Supreme Court Finds Warhol’s Commercial Licensing of “Orange Prince” to Vanity Fair Is Not Fair Use and Infringes Goldsmith’s Famed Rock Photo

At the beginning of April, 3M, the nation’s largest producer of the now infamous N95 mask, filed two lawsuits against companies it claimed were confusing and deceiving buyers by falsely associating 3M with the defendants and re-selling its N95 masks at “grossly inflated”[1] prices. Such behavior, according to 3M, violates federal trademark law. The lawsuits, which were filed in the Southern District of New York[2] and the Eastern District of California[3], were some of the first major trademark lawsuits to come out of the COVID-19 pandemic. On the same day, 3M also filed suit against a John Doe in Texas state court. 3M did not stop there. Most recently, on April 30, 2020, 3M filed four additional lawsuits: two in the Middle District of Florida,[4] one in the Northern District of Florida[5], and one in the Southern District of Indiana.[6]  Overall, the complaints in these suits contain claims of federal trademark infringement, unfair competition, false association, false endorsement, false designation of origin, trademark dilution, false advertising, deceptive acts and business practices and other state law claims.
Continue Reading 3M Takes Action to Protect Its Brand from Price Gouging And Trademark Infringement