‘This is the tale of two women, two teenage dreams and one name’ – Justice Markovic
The Federal Court has found a company associated with Katheryn Hudson, better known as Katy Perry, singer of popular hits including ‘Roar’ and ‘I Kissed A Girl’, jointly liable for the infringement of a trade mark owned by Katie Taylor, Australian fashion designer and owner of fashion brand ‘Katie Perry’. Katy Perry herself was able to rely on the “own name” defence to avoid infringement.
This case is a reminder:
- to ensure you have the right to use a mark in a particular market, including where the rights are licensed under contract;
- that care needs to be taken in drafting the goods and services to be covered in a trade mark application;
- that the own name defence is only available to the person that has that name, it doesn’t extend to related companies;
- that reputation in a brand is generally limited to the goods and services in relation to which it is used, even when you’re a singer whose fame is rising.
In 2008, Australian fashion designer, Taylor, applied for registration of ‘Katie Perry’ as a trade mark in class 25 in relation to ‘clothes’. Taylor, whose birth name was ’Katie Perry’, had been using this as the brand for clothes she had been manufacturing and selling in Australia since 2007.
Around that time, singer, Perry, through her companies Kitty Purry and Killer Queen, developed ‘Katy Perry’ branded merchandise to be sold during the Australian leg of her world tour in 2009. Perry sought to register the mark KATY PERRY in classes 9, 25 and 41, including in relation to various clothing and related items. In the process, Perry was alerted to Taylor’s trade mark application. Perry opposed Taylor’s application and sent her a letter of demand. The parties engaged in protracted correspondence, including attempting to negotiate co-existence arrangements.
Taylor’s story was picked up by the press in Australia and Perry withdrew the trade mark opposition and ceased negotiations. With the opposition withdrawn, Taylor’s mark secured registration. Perry’s application was then blocked by Taylor’s, so Perry removed class 25 from her trade mark application to secure registration in the other classes.
Despite the failed negotiations and no registration of the brand for clothing, Perry and her companies engaged third party distributors to market and sell KATY PERRY branded merchandise between 2009 and 2021.
In 2019, after some delay due to lack of funds, Taylor commenced Federal Court action against the singer and her companies for infringement of her trade mark.
Use on or in relation to Registered Goods
There was no dispute between the parties that the marks KATIE PERRY and KATY PERRY are substantially identical or deceptively similar. So, to determine infringement, the Court considered whether the KATY PERRY brand was applied to ‘clothes’ or ‘goods of the same description as clothes’.
The judge applied a common sense meaning of ‘clothes’ and concluded that use of the KATY PERRY mark by the third party distributors on merchandise such as t-shirts and jackets, and the advertising and marketing of those merchandise, amounted to infringement. However, importantly, her Honourfound that other merchandise such as hats, shoes and accessories were not ‘goods of the same description’ as ‘clothes’ and there was no infringement of the mark in relation to those goods.
Taylor also claimed that Perry and her companies, if not directly infringing, should be liable as joint tortfeasors.
In considering this issue, the judge looked at the degree of involvement of Perry’s companies arising out of their obligations set out under the contracts with the third party distributors for the marketing and sale of merchandise.
Where the agreements between Kitty Purry and a third party distributor required Kitty Purry to be specifically involved in the manufacture, distribution and sale of the merchandise (those being the infringing acts), the judge found Kitty Purry liable as a joint tortfeasor. Killer Queen did not have any such obligations under its contracts and was therefore found not to be liable.
Katy Perry not infringing
Despite being the face of the ‘Katy Perry’ merchandise and the director of both Kitty Purry and Killer Queen, Perry was ultimately not personally liable for any instances of infringement.
Perry had, on a number of occasions, personally marketed KATY PERRY branded merchandise on her social media channels; acts which would have been directly infringing Taylor’s trade mark.
However, under the Trade Marks Act 1995, there is a defence to infringement if a person uses their own name in good faith. Perry was able to successfully rely on this defence by demonstrating that she used her own name in the honest belief that no confusion could have arisen between the merchandise bearing KATY PERRY and the clothes bearing Taylor’s ‘Katie Perry’ mark. It was held not to matter that ‘Katy Perry’ is Perry’s adopted stage name, not her legal name.
In their cross-claim, Perry sought to cancel Taylor’s trade mark on the basis that they could have opposed the registration of that mark due to reputation at the time the application was filed. The Court found that Perry had a reputation at that time, but that reputation was in relation to entertainment and music, not clothes. As a result, Perry failed on this point and Taylor’s trade mark remains registered.
The case has been appealed, so watch this space.
By Esther Ting and Michelle Eadie