In a “tale of two women, two teenage dreams and one name”, the Federal Court of Australia recently found that the celebrity singer-songwriter, Katy Perry and her affiliated companies’ use of the trade mark KATY PERRY amount to trade mark infringement. The Court held that in selling clothing in Australia using the trade mark KATY PERRY, the US popstar had infringed an Australian trade mark for KATIE PERRY, registered in Class 25 for “clothes.” This has been a long-running saga between these parties. Given the worldwide fame of the singer Katy Perry, the decision has unsurprisingly, received significant media attention. We consider the practical lessons from the decision for brand owners to consider.

Background

The claimant is an Australian fashion designer, born as Katie Jane Perry. Although for most of her life she has been referred to as Katie Howell, she designed and sold clothes under the brand name KATIE PERRY since about 2007. She applied for the trade mark KATIE PERRY for “clothes” in Class 25. The second respondent in the proceedings, Katheryn Elizabeth Hudson, has been active as a music artist since at least 2000. In 2002, she adopted her stage name ‘Katy Perry.’ The evidence offered in the case indicated that ‘Katy Perry’ is a combination of the shortened form of her first name and her mother’s maiden name and that it was chosen to avoid confusion between the singer and the actress, Kate Hudson.

Trade mark opposition and failure to reach settlement

On becoming aware of the fashion designer Katie Perry in May 2009, the singer Katy Perry opposed the KATIE PERRY trade mark application in Australia in Class 25 and sent a number of cease and desist letters to the claimant. One month later, the singer also filed her own trade mark application in Australia for the mark KATY PERRY in classes 9, 25 and 41. Then followed a period of negotiations between the parties in which a draft trade mark co-existence agreement was negotiated, but talks broke down and a co-existence agreement was not agreed.

Fearing potential negative publicity from the dispute, the singer Katy Perry withdrew her opposition of the claimant’s trade mark application for the mark KATIE PERRY which then proceeded to registration on 21 July 2009. Meanwhile, the singer’s own application for KATY PERRY was refused in Class 25 in September 2009 by IP Australia on the basis that it was identical to, or closely resembled the KATIE PERRY trade mark which was registered in the same class. To address the issues raised, the singer deleted Class 25 from her trade mark application. Her mark for KATY PERRY then proceeded in Classes 9 and 41.

In light of these facts and in proceeding to sell KATY PERRY branded clothing when the singer subsequently toured Australia in 2014, the respondents accepted that the singer was taking “a calculated risk” of being sued.

Federal Court decision

On 24 October 2019 after she had secured litigation funding from a third party, the claimant commenced Federal Court proceedings against Katy Perry for trade mark infringement. In retaliation and by way of counterclaim, the singer sought to cancel the claimant’s KATIE PERRY trade mark.

The Court held that Katy Perry had infringed the claimant’s trade mark as a result of:

• A tweet and Facebook post she posted in October 2013 promoting a jacket advertising her album “Roar”
• A tweet she posted in December 2018 promoting “Cozy Little Christmas” hoodies, t-shirts, sweatpants and scarves by reference to the mark KATY PERRY, and
• Various social media posts promoting pop-up stores selling KATY PERRY clothing and merchandise in Australia

However, the Judge was satisfied that the singer was not personally liable for trade mark infringement as she had used the KATY PERRY mark, which was her own name, in good faith. The same finding was not reached in respect of her company, Kitty Purry on the other hand, which was found to be liable for infringement of the claimant’s trade mark in advertising, offering for sale and selling clothes bearing the KATY PERRY mark. Lastly, the Court dismissed the singer’s counterclaim seeking cancellation of the KATIE PERRY mark.

Lessons for brand owners

Although the decision may be appealed by either or both of the parties, as matters stand, an injunction has been ordered restraining Kitty Purry from selling KATY PERRY branded clothing and merchandise in Australia. Kitty Purry must also pay additional damages, the level of which will be determined at a further hearing. The claimant is also entitled to elect between damages or an account of profits.

The case highlights some practical takeaways points for all brand owners:

• The importance of undertaking trade mark clearance searches before entering a new territory or market cannot be overstated.
• Applying for trade mark protection, for all relevant goods and services, at an early stage is equally crucial. Clothing and other forms of merchandising are very lucrative to pop stars. Katy Perry’s lack of a trade mark registration in Class 25, left her vulnerable to an infringement claim for clothing.
• Where there have been objections to certain goods and services, or potential for objections, sometimes other trade mark prosecution strategies can be useful in seeking to obtain protection.
• In a David and Goliath type case such as this, Katy Perry was rightfully concerned about possible adverse publicity from the case. The tone of cease and desist letters is really important in seeking to achieve a good resolution.
• Care should be taken with relying on use of your own name as a defence to trade mark infringement, if, for example, you have assigned your rights to your company, which is using the name, or licensed the name to third parties.
• Finally, the dispute highlights the merit of entering into co-existence or settlement agreements and seeking to amicably resolve trade mark disputes, where possible. Unfortunately, in this case, the settlement negotiations had broken down.

For more information about registering trade marks and defending your organisation’s IP rights, contact a member of our Intellectual Property team.

The content of this article is provided for information purposes only and does not constitute legal or other advice.