Debevoise & Plimpton LLP has secured a significant trademark victory on behalf of Judd Foundation by successfully opposing motions to dismiss a high-profile lawsuit against defendants Clements Design, Inc. (“Clements”) and celebrity Kim Kardashian.

Judd Foundation is a nonprofit organization founded to protect the legacy of Donald Judd, a pioneering and renowned twentieth-century American artist. Mr. Judd’s works are featured in world-famous museums like the Museum of Modern Art and the Guggenheim Museum in New York and the National Gallery of Art in Washington D.C. He is widely known and acclaimed for his distinctive minimalist, geometric, and precise style, which he also incorporated into furniture designs. Judd Foundation sells authentic DONALD JUDD furniture using Mr. Judd’s iconic designs and adhering to his exacting standards of fabrication and materials.

In 2022, Ms. Kardashian posted a YouTube office video tour of SKKN BY KIM, a company she had recently founded. In the video, Ms. Kardashian pointed to two sets of inauthentic, lookalike Donald Judd tables and chairs and referred to them as “Donald Judd tables.” Judd Foundation later learned that the furniture was manufactured by Clements. Despite recognizing that the furniture was inauthentic, Ms. Kardashian and Clements refused to discard the furniture or take down the video. In March 2024, Debevoise filed a complaint in the United States District Court for the Central District of California, alleging various Lanham Act, copyright, and unfair competition claims against Clements, including trademark and trade dress infringement, and false endorsement against Ms. Kardashian. Clements and Ms. Kardashian moved to dismiss all claims.

Judge Maame Ewusi-Mensah Frimpong dismissed the motions in their entirety. The Court found that Judd Foundation adequately pleaded that a reasonable consumer could be confused as to whether Ms. Kardashian was associated with or had been endorsed by the Donald Judd brand. Judge Frimpong also found that, as pleaded, Ms. Kardashian acted with actual malice and the First Amendment did not protect her statement. Turning to Clements’ motion, Judge Frimpong held that Judd Foundation had pleaded trade dress rights in its furniture designs by demonstrating the designs were non-functional and had acquired secondary meaning. Judge Frimpong also found that Judd Foundation had adequately pleaded trademark infringement, copyright infringement, and false advertising through Clements’ use of a design proposal that used the DONALD JUDD trademark and a copyrighted photograph of authentic DONALD JUDD furniture.

The opinion underscores the strength of Debevoise’s complaint and oppositions to the motions to dismiss, which asserted and defended unique theories of false endorsement and trademark liability. By including details about Ms. Kardashian’s status as a “widely known celebrity,” an “influencer,” and an “art collector and design enthusiast,” Judd Foundation successfully pleaded that Ms. Kardashian’s reference to Donald Judd alongside other well-known art personalities was likely to cause confusion as to whether she had been endorsed by Mr. Judd. The court further found that Clements’ use of the phrase “in the style of Donald Judd” to describe its lookalike furniture was not protected fair use of the DONALD JUDD trademark because, in context, “the facts suggest that Clements did not make clear that the products were from Clements.” These are novel findings in the area of false endorsement and trademark law, which will help to deter other manufacturers of copycat furniture—a practice that is rampant in the industry—and those seeking to boost their own brands through unauthorized endorsements.

The Debevoise team was led by litigation partner Megan Bannigan and counsel Jared Kagan and included partner David Bernstein, and associates James Stramm and Annie Seminara, with support from discovery and data manager Dmitriy Chekhovskiy and litigation case manager Kimberly Hollingsworth.