An Australian fashion designer has won a court battle against pop star Katy Perry following a long-running trademark dispute.
Key points:
- Australian woman Katie Taylor has owned the Katie Perry fashion brand for 17 years
- She has been in a legal to-and-fro with pop singer Katy Perry over the name since 2009
- The Federal Court ruled in favour of Ms Taylor after she filed a trademark infringement case in 2019
The case heard in the Federal Court of Australia ceased last Friday, with the results only released by the judge on Thursday.
A string of legal action was first launched in June 2009 over a trademark held by Katie Jane Taylor, who uses her birth name to design and sell clothes under the brand Katie Perry.
Ms Taylor and the US pop singer have continually butted heads over who gets the rights and financial benefit over the homophonous name.
“This is a tale of two women, two teenage dreams and one name,” Justice Brigitte Markovic said at the beginning of a lengthy written judgement.
The court ruled the designer had partially succeeded on her claims of trademark infringement.
She found infringements occurred during Perry’s 2014 and 2015 Prismatic Tour in Australia, at pop-up stores in Sydney and Melbourne during that tour, and on a website for merchandise company Bravado.
One of Perry’s companies, Kitty Purry, was liable for those infringement, the judge found.
Perry herself was also found to have infringed the trademark through several tweets and Facebook posts promoting products and pop-up stores in 2013 and 2014.
Ms Taylor had alleged trademark infringement in relation to a total of eight “channels” of selling clothing, including via Myer, Target and Cotton On after 2013.
But despite the infringements being established in relation to the tour, pop-up store and Bravado website, the judge found her claims otherwise failed.
A dual namesake
In 2008, Katy Perry burst onto the music scene with her breakthrough track I Kissed A Girl, and follow-up hit Hot N Cold.
It was the same year that Sydney-based woman Katie Perry – who also went by Katie Howell at the time – filed a trademark application on her line of tees, pants and accessories that September.
Ms Taylor established Katie Perry in late 2006, and operated without issue until she received a cease and desist notice three years later from the musician’s representatives over the brand’s similar name in June 2009.
Meanwhile, Perry, who had been enjoying commercial success on the Australian charts, also applied for a trademark for the word “Katy Perry” in the same month as the legal correspondence sent to Ms Taylor.
Perry’s legal name is Katheryn Elizabeth Hudson, having taken on her mother’s maiden name for her performances in 2004.
Her team tried to push Ms Taylor to back away from her lounge wear label, arguing her brand name was “misleading or deceptive”.
“I had no knowledge of the singer at the time,” wrote Ms Taylor in a 2020 blog post reflecting back on the period.
Ms Taylor’s clothing trademark for Katie Perry officially entered the Intellectual Property Australia’s register in July 2009.
A hearing with IP Australia between the two parties was scheduled at the time after Perry’s team filed a notice of opposition, but ultimately fell through.
Attempts to establish a co-existence agreement also failed.
Return to the lawyers
Just over a decade after the original scuffle, Ms Taylor applied with the Federal Court of Australia against Perry and her companies Killer Queen and Kitty Purry.
In the years since the original confrontation, Perry had been down under four times as part of her world tours.
The court heard allegations that Perry’s merchandise was “substantially identical with, or deceptively similar to” Ms Taylor’s trademark.
The civil law case has since been going on back-and-forth for over three years.
“Ms Hudson and her advisors attempted to use their greater sophistication and financial might to snuff out Ms Taylor’s nascent business,” said Barrister Christian Dimitriadis SC in November 2021.
The star did not appear in person, but her manager Steven Jensen took the stand as a witness.
Perry’s legal team filed a cross-claim in December 2019 against Ms Taylor, seeking orders that Ms Taylor’s trademark be cancelled because the singer already had a reputation in Australia before the designer staked her legal claim over it.
Katy Perry trademark battle
But Justice Markovic found this month that Perry’s reputation at that point was in relation to entertainment and music, even though there was evidence of her intention to use her name in relation to clothing.
“I am not satisfied that, because of that reputation, the use of the [Ms Taylor’s trademark] would be likely to deceive or cause confusion,” the judge said.
As to whether the designer’s trademark may cause confusion more recently, due to Perry’s international fame, the judge said that by late 2019 there was no evidence of any such confusion despite both women trading for some ten years.
The cross-claim was dismissed.
Perry continues to hold five registered trademarks in Australia, according to an IP Australia spokesperson.
