Australian designer Katie Perry is now free to sell her sustainable fashion using her name brand after winning a David and Goliath legal battle with the singer who shares her name. Brisbane lawyer David Topp breaks down this ‘Aussie underdog’ story.
American singer Katy Perry first became known in Australia in 2008 with her song ‘I Kissed a Girl’, a paean to bi-curiosity and her discovering that ‘I liked it’.
17 years later, Katy Perry possibly did not like being a litigant in a counter-copyright lawsuit in the High Court of Australia.
Aussie designer first to trademark
Australian fashion designer Katie Jane Taylor (born Katie Jane Perry) owned the class 25: clothing, footwear, headgear trade mark ‘Katie Perry’. Taylor sued a company controlled by Katy Perry alleging infringement of her ‘Katie Perry’ trade mark when the singer used her trade mark ‘Katy Perry’ in Australia for musically branded clothing.
In response, Katy Perry (the singer) had her corporate entities counter-sue for Ms Taylor’s ‘Katie Perry’ trade mark cancelled and removed.
Last month, by the narrowest of margins; three judges to two, Taylor succeeded in protecting her trade mark in Australia’s highest court.
Clothing v merch
In life and especially in law, timing is everything. Taylor applied to have her clothing trade mark registered on 29 September 2008.
Perry applied to register her trade marks, crucially not in clothing but in classes 9 (recording discs) and 41 (entertainment) in 2009. This means Katy Perry’s companies were both later in time and non-registered in Taylor’s registered clothing class.
In a dissenting judgement, two of the five High Court judges ruled ‘the commonly accepted practice of pop stars selling merchandise including clothing’ in the context of ‘the greater international fame of Katy Perry by that time, including her associated clothing merchandise’, meant that Taylor’s earlier in time ‘Katie Perry’ clothing trade mark would yield to Katy Perry’s to prevent deception or confusion.
How could a later trade mark defeat the original? Under the federal Trade Marks Act 1995, the Katy Perry companies could apply – and did – to have had Taylor’s earlier clothing related trade mark cancelled on a basis of it being ‘likely to deceive or cause confusion’.
The ‘I’m more famous’ argument
In simpler terms, the Katy Perry companies’ later non-clothing related trade marks had, over the course of one decade, overtaken Taylor’s in a reputational sense. Thus, to have maintained Taylor’s ‘Katie Perry’ trade mark’s registered status, would have been productive of deception or confusion, to Katy Perry’s detriment.
The history was this: by 4 September 2008 Katy Perry’s ‘I Kissed a Girl’ had six weeks at number one on the Australian charts. However, there had never been any ‘Katy Perry’ branded merchandise available for sale in Australia by September 2008.
Katy Perry’s only reputation in Australia as of September 2008 were for the service of ‘entertainment’ and the goods of ‘recording discs’. The ‘Katy Perry’ trade mark had not acquired a clothing-related reputation.
No evidence of confusion between brands
In 2019 however, ‘Katy Perry’ branded clothing had been sold in Australia over the intervening decade. Could Taylor’s use of the ‘Katie Perry’ trade mark, not for music but its registered purpose of clothing, involve ‘a real, tangible danger of a reasonable number of people being caused to wonder whether a trade connection existed between’ the ‘Katie Perry’ clothing and the ‘Katy Perry’ trade mark of ‘entertainment’ and ‘recording discs’?
Two of the five High Court justices said yes. Crucially three said no. One of them, Justice Jagot, concluded ‘the Katy Perry parties simply had not adduced sufficient evidence to discharge their onus of proving the existence of a real, tangible danger of confusion’.
Justice Jagot summarised evidence that ‘by around 2014 onwards Katy Perry was transforming from a person famous for her songs and performance to a person famous as Katy Perry’.
‘[T]en years is a long time for two deceptively similar trade marks to be on the market in Australia with no evidence of any confusion… That period was sufficiently long to support an inference from the absence of evidence of confusion that in fact it was not likely that people had been or would be deceived or confused’ by Taylor’s original ‘Katie Perry’ trade mark’, Justice Jagot declared.
Win for the underdog
This decision underscores the public’s interest in Taylor’s victory as an Aussie underdog story.
Commenting on her court victory, Katie Taylor said: ‘To anyone out there fighting for something that matters, keep going. Nearly 20 years of building a small Australian fashion label led to this moment.’
‘This case has never just been about a name,” she said. ‘It has been about protecting small business in Australia, for standing up for what is right and showing that we all matter.’
IMAGES of Katie Perry (designer LEFT) and Katy Perry (singer RIGHT) supplied
