Australian High Court Rules in Favor of Designer Katie Perry in Trademark Battle
The Australian High Court has delivered a majority decision, ruling in favor of Australian fashion designer Katie Perry (who later used the name Katie Taylor) in a trademark dispute with American pop star Katy Perry (born Katheryn Elizabeth Hudson). The judgment concludes a legal process that began in 2009, upholding the designer's right to use her "Katie Perry" brand for clothing sales in Australia.
The Decade-Long Trademark Tussle
Australian designer Katie Perry, born Katie Perry, launched her fashion line under the name "Katie Perry" in 2007. She applied to register her business name in April of that year. She sought to register the "Katie Perry" trademark for clothing sales in September 2008. She stated she was unaware of the pop star at the time she initially sought the trademark but became aware around the time her trademark was registered, following the release of the singer's debut hit single, "I Kissed a Girl."
The pop star, Kathryn Elizabeth Hudson, adopted her stage name "Katy Perry" around 2001. Her team established an online store selling "Katy Perry" branded merchandise globally in October 2008, coinciding with her first performance in Australia.
The legal dispute commenced in May 2009 when the singer opposed the registration of the designer's trademark and issued cease and desist letters. Emails cited in the High Court's judgment included a June 2009 communication from the singer's manager, Steven Jensen, stating his team had "not tried to keep [Taylor] from trading under her name" or "sued her for trademark infringement." Katy Perry responded to Jensen, expressing frustration and using expletives.
In July 2009, the "Katie Perry" trademark was formally registered in the Australian trademark register for clothing. The singer's "Katy Perry" trademark, which explicitly excluded clothing, was registered in Australia in November 2011.
Journey Through the Courts
The dispute escalated in 2019 when the designer initiated legal action against the singer in the Federal Court, alleging trademark infringement due to the sale of "Katy Perry" branded apparel and tour merchandise in Australia. The singer filed a cross-claim seeking to cancel the designer's trademark, arguing that her reputation in Australia by 2008 would cause confusion.
- Federal Court (First Instance): The designer initially prevailed in 2023. The court found that the singer's label, Kitty Purry, infringed on the designer's trademark during the singer's 2014 Prismatic tour.
- Federal Court (Appeal): This decision was overturned on appeal in 2024. The appellate judges determined that Katy Perry's reputation in Australia exceeded Taylor's at the time of Taylor's trademark registration and suggested that the designer's "Katie Perry" trademark should be canceled.
High Court Upholds Designer's Rights
On Wednesday, the Australian High Court delivered a majority decision, overturning the Federal Court's appeal ruling and siding with designer Katie Perry (Taylor).
Key findings from the High Court include:
- The court rejected the argument that the singer had acquired a significant reputation in Australia by 2008 that extended to clothing.
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It was determined that, even considering the strength of the pop star's reputation, an ordinary person in Australia would not perceive a link between products labeled "Katie Perry" and the singer after reflection.
- The court concluded that the singer’s label, Kitty Purry, and her merchandise distributor, Bravado, were "assiduous infringers" of the designer’s trademark.
- The judges noted that the majority of merchandise sold by Katy Perry in Australia was clothing, despite her "Katy Perry" trademark explicitly excluding clothes. This conduct was described as "very much deliberate."
- The High Court awarded costs in favor of the designer.
This pivotal decision allows Katie Taylor to continue operating her clothing brand using her name.
Reactions to the Verdict
Following the High Court's decision:
- A spokesperson for the singer stated that Katy Perry "has never sought to close down Ms. Taylor’s business or stop her selling clothes under the KATIE PERRY label." The spokesperson added that the High Court referred the case back to the Full Federal Court to address other issues raised by Katy Perry, including Taylor’s 10-year delay in bringing her case.
- Katie Taylor, in a statement on her website, said the decision highlights that "even small Australian businesses" can defend their rights, emphasizing that the case was about "protecting small business in Australia."