Theodore C. Max

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

"Ted is the whole package. He is very thorough, looks at the issues from all
angles and is really strategic with his advice."
– Chambers 2023 (Client)

Areas of Practice

Theodore focuses on counseling clients on intellectual property issues and litigation. He is leader of the firm's Fashion and Apparel team. Theodore combines his skill and experience as a trial attorney with his knowledge of copyright, trademark and intellectual property law in servicing the firm's diverse clientele.

Theodore has counseled clients on and litigated numerous cases involving issues on the cutting edge of copyright and trademark law. He has assisted clients in identifying, protecting and preserving their intellectual property assets, including seeking registration of rights in the United States and internationally and taking action against infringements of copyrights, trademarks and trade dress. He also has experience developing and implementing anti-counterfeiting programs and pursuing civil and criminal enforcement remedies. Theodore has actively litigated intellectual property issues, as well as licensing and franchise disputes, and the rights of publicity and privacy. He successfully has represented clients in all types of civil litigation, including alternate dispute resolution proceedings and mediation, trials and appeals.

Honors

Leading Lawyer, Intellectual Property, Chambers USA, 2023-2024

Copyright Law, Best Lawyers in America, Best Lawyers, 2020-2025

Leading Trademark Professional, World Trademark Review, 2015-2024

Intellectual Property Star, Managing Intellectual Property, 2015-2020, 2022-2024

Intellectual Property, Media and Advertising, Legal 500, 2013-2019

New York Super Lawyer - Intellectual Property Litigation, Super Lawyers, 2008-2022

Named as one of the "Legal Elite Litigation List," Avenue Magazine, 2011-2012

Articles

Mr. Max has lectured widely and authored numerous publications.

"FTC Disclosure Guide Signals More Influencer Scrutiny," Law360, December 12, 2019

Digital Marketing: Native Advertising and Online Influencers in the Hospitality Industry, Hotel Business Review

"Advertising on the Cutting Edge," The Metropolitan Corporate Counsel, October 2016

Authored a chapter in the book, Fashion Law: A Guide for Designers, Fashion Executives & Attorneys, which is entitled "Celebrities and Fashion Models: Endorsement and Promotion Agreements."

"Coloring Outside the Lines in the Names of Aesthetic Functionality: Qualitex, Louboutin, and How the Second Circuit Saved Color Marks for Fashion," The Trademark Reporter, September/October 2012

"Litigating Trademark And Copyright Cases In The Metaverse," The Metropolitan Corporate Counsel, January 25, 2012

"Tweet Me! - The Southern District of New York Answers Copyright Questions Raised by Twitter and Twitpuc Use," Terralex's Intellectual Property Newsletter, September 2011

"Congress Has Designs For Piracy Prevention Legislation," Daily Journal, August 9, 2011

"Charting A Safe Course In The Perfect Storm Of Consumer Privacy Laws," The Metropolitan Corporate Counsel, June 2011

Authored a chapter in the book, "Inside the Minds: New Developments in Evidentiary Law in New York, 2011 ed.", Aspatore Publishing, April 2011.

"Trademarks in the Veldt: Do Virtual Lawyers Dream of Electric Trademarks?" The Trademark Reporter: The Law Journal of the International Trademark Association, Vol. 101, No. 1, January-February, 2011.

Project Runway: The Am Law Daily Edition, The AmLaw Daily, February 19, 2009

House Okays Watered Down PRO IP Act, World Law Media, June 1, 2008

Designer Hotels Are In Fashion: But Care Should Be Taken To Avoid A Major Faux Pas, Hotel Executive.Com, May 1, 2008

When Copyright and Trademark Infringement Goes Online, New York Law Journal, October 29, 2007

When Keywords Trigger Sponsored Links, Be Mindful of WhenU and the Split in the Circuits Before Choosing Your Forum Court, Bloomberg Law Reports, September 10, 2007

Authored a chapter in the book, Intellectual Property Assets in Mergers and Acquisitions, which is entitled "Acquisitions and Licensing of Famous Name Trademarks and Rights of Publicity in the United States."

Authored a chapter in the book, Handbook of Fashion Rights, which is entitled "Intellectual Property Protection and Fashion in the United States."

 "Total Recall: A Primer on a Drastic Form of Equitable Relief," published in The Trademark Reporter®, in May-June 1994

"Dilution Act May Limit Commercial Parodies," published in The National Law Journal

Contributed a chapter in the book, The New Role of Intellectual Property in Commercial Transactions, entitled "Available Remedies For Dispute Resolution in International and Domestic Trademark Licenses."

Art Law Blog Posts

• "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," June 16, 2023
• "Supreme Court Finds Warhol’s Commercial Licensing of “Orange Prince” to Vanity Fair Is Not Fair Use and Infringes Goldsmith’s Famed Rock Photo," May 26, 2023

Covering Your Ads Blog Posts'

• "FTC Finalizes Revisions to the Endorsement Guides, Proposes New Rule for Consumer Reviews and Testimonials and Updates FTC Staff Guidance," July 6, 2023

Fashion & Apparel Law Blog Posts

• "Seeking to Stop Deceptive ‘MADE IN USA’ Claims, the FTC Takes Action Against Brandnex," May 14, 2021

• "No Future for Fur in the Golden State?" October 8, 2019 
• "See You Later Alligator? After A While Crocodile? Will Penal Law 653o(b)(1) Take Effect?" October 8, 2019 
• "FTC Swats Public Relations Firm and Publisher for Misleading Olympic-Themed Mosquito Repellant Product Endorsements and Native Advertisements," December 6, 2018 
• "Kim Kardashian West Won the First CFDA Influencer Award: Will A CGI Supermodel Be Next?" August 1, 2018 
• "Do We Need A Truth In Advertising Act? The Industry and Retailers Self-Regulate Photoshopping Ads," February 20, 2018 
• "Brands Beware!!!! FTC Scrutinizing Influencer Posts for Compliance with Endorsement Guides," April 21, 2017 
• "'Oh Yes [the Court] Did' — District Court Grants Motion to Dismiss ADA Complaint Until the DOJ Issues Implementing Regulations and Renders Technical Assistance," March, 31, 2017
• "Who’s Got the Spirit?! Supreme Court Decides Star Athletic, LLC v. Varsity Brands, Inc.; New Two-Part Test Seeks to Clear Up the 'Mess' But Questions Still Remain About the Subjective Nature of the Separability Analysis," March 27, 2017
• "FTC Requires that iSpring’s 'Built in USA' Claims Hold Water," February 10, 2017
• "FTC Grants Summary Judgment Against California Naturel, Inc. Falsely Advertising 'Sun Blocked' Sunscreen Products," December 29, 2016
• "Rah! Rah! Sis Boom Bah! Supreme Court to Decide Whether Copyright Act Protects Cheerleader Uniform Designs," May 5, 2016
• "Climate Change Gets Fashionable: The Fashion Industry Embraces The President’s Climate Change Initiative," December 22, 2015
• "Will The FTC Issue Native Advertising Guidelines in 2015?" May 18, 2015
• "There’s No Such Thing As a Free Sample," May 18, 2015
• "Trending Information: The Connection Between Data Brokers and the Fashion Industry," July 24, 2014
• "International Safe Harbor Privacy Compliance: What You Need to Know," July 14, 2014
• "Too Good To Be True: FTC’s Crackdown On L’Occitane’s Body Slimming Almond Extracts," July 11, 2014
• "Fur Flies and West Hollywood (“WeHo”) Fur Ban Is Upheld By Federal Court," July 3, 2014
• "New Updated FTC Care Labeling Rules: 'Do’s and Don’ts,'" June 26, 2014
• "Second Circuit Digs Its Heels Into Louboutin Dispute; Finds "Red Sole" Trademark Protectable, But Limited in Scope," September 19, 2012

Intellectual Property Law Blog Posts

• "The Innovative Design Protection and Privacy Prevention Act: Will Design Protection Be In Vogue in Congress?" September 1, 2010
• "What Is the Jurisdictional Pre-Requisite for Copyright Litigation?" July 14, 2009
• "Joseph Abboud Is Back: Personal Name Trademark Controversy Continues," July 13, 2009
• "Second Circuit Resolves Split Between the Circuits Regarding Sale of Keywords to Trigger Sponsored Links and "Use in Commerce" Under the Lanham Act," April 10, 2009
• "Gibson's Patent Action Against Activision Hits Wrong Chord With Court In "Guitar Hero" Dispute: Summary Judgment Granted," April 10, 2009
• "S.D.N.Y Holds eBay Not Liable in Closely Watched Trademark Case," July 14, 2008

Social Media Law Update Blog Posts

• "3M Takes Action to Protect Its Brand from Price Gouging And Trademark Infringement," May 5, 2020

•  M<ay"How to Legally Protect Your Brand in the New Millennium," November 16, 2010

Books

Media Mentions

Speaking Engagements

• "Advertising and Promotion in the 21st Century Global Market.” Brands and Fashion Conference, March 22-23, 2017
• "Designing a Greater System of Protection for Fashion: The Future of Fashion Law," New York University School of Law, February 19, 2015
• "Hot Topics for 2013: What You Need to Know to Avoid Fashion Jeopardy?" New York, February 13, 2013
• “IP Enforcement and Litigation 2011: Civil and Criminal Update” Practising Law Institute, March 30, 2011

Events

Memberships

Amicus Committee, International Trademark Association

Past Chair, Publications Committee, International Trademark Association

Past Editor-in-Chief, The Trademark Reporter®, 1999-2001

Previous United States Original Articles Editor

Previous International Original Articles Editor

SubCommittee Chair, "International Annual Review of Developments in Trademark Law and Practice," The Trademark Reporter®