Australian designer Katie Perry wins trademark case against popstar Katy Perry in High Court
Australian fashion designer Katie Perry has won her High Court battle with international pop star Katy Perry in a long-running trademark case.
The dispute over the name began in 2009 when the singer was preparing for her Hello Katy Australian tour.
But it wasn't until 2019 that the case gained momentum when the designer took the singer to the Federal Court, saying her trademark had been infringed by the sale of the singer's branded clothes, shoes and headwear.
In a majority decision, the High Court today found the designer's mark was not likely to harm the singer's reputation or cause confusion, and was not in breach of the trademark laws.
A long-running battle
The case was about who has the right to sell clothes bearing the Katie Perry, or Katy Perry name.
Katy Perry, the singer, was born Kathryn Elizabeth Hudson but adopted her stage name in about 2001.
Katie Perry, the designer, was born with that name, but changed to other names, including Katie Taylor.
The court heard the designer did not know about the singer when she first sought a trademark, although by the time it was registered, she had become aware of her after hearing the song "I Kissed A Girl".
Katie Perry took the singer to the Federal Court in 2019, saying her trademark had been infringed. She won in the first instance, but lost on appeal.
The High Court has ruled in favour of Sydney designer Katie Perry. (ABC News: Jack Ailwood)
The Federal Court appeal ruling was particularly harsh, with the judges finding not only that Katy Perry, the singer, had established a reputation in Australia before the clothing brand was established, but also that the Katie Perry clothing brand was liable to be cancelled.
That's because, under the law, registration of a trademark can be opposed if another similar trademark has already acquired a reputation and if the names of the two brands are confusing or deceptive.
The singer's lawyers told the High Court the Katy Perry stage name could not be divorced from the reputation of the name when it came to marketing.
But Katie Perry, the designer, said her actions were innocent, that she adopted the trademark for clothes first and applied to register the name before she had heard of the singer.
Her lawyers argued that she had used the brand name for a decade without any confusion.
Emails reveal Katy Perry's anger over media coverage
In a majority decision today, the High Court found that the use of the designer's mark on clothing was unlikely to deceive or cause confusion given the singer's reputation in Australia, and was not in breach of the law.
In the judgment, Justice Simon Steward pointed to documents showing Katy Perry's manager, Steven Jensen, became aware of the Katie Perry trademark in 2009.
"She has 'traded' under the name of Katie Perry since 2007," Mr Jensen wrote in an email to the singer.
"Of course, this issue has been blown way out of proportion as we (you) have not tried to keep her from trading under her name, and have certainly not sued her for trademark infringement."
Later in the correspondence, Mr Jensen expressed interest in including something from Katy Perry in a media statement about the matter.
"As is common in Australia, the tabloids have picked this up and made it into a 'story'," he wrote.
"We are arranging for some publicity (probably a press release) to clarify the situation, and want to have that in place by end of business tomorrow. We'll keep you posted as we will probably want to include a statement from you. We're on it!"
Katy Perry's lawyers told the High Court her stage name could not be divorced from its reputation when it came to marketing. (Picture: AAP Image/James Ross)
In her response to Mr Jensen, Katy Perry asked not to be included in the release.
"I say keep me outta it entirely," she wrote.
"Make it less important but release something from management, pretty much stating the facts … Don't soften it up, don't apologize, nothing. Let me know what's going out before it does pls.
"Stupid b****es. I wouldn't have even bothered with this [if] mtv hadn't picked up this silliness. Dumb b***h! Rawr!"
Today, Justice Steward said Mr Jensen had "incorrectly stated that the respondents had done nothing to stop the registration of the appellant's mark".
"First, in May 2009, the American artist filed a notice of opposition to the registration of the appellant's mark out of time, with an application for an extension of time to file that notice," Justice Steward said.
"Second, also in May 2009, the appellant received a cease and desist letter from Australian trademark attorneys acting for the American artist."
Justice Steward described Katie Perry's outfit as a "self-funded small business".
"In contrast, the American artist's fame grew rapidly," he said.
"So did her business as a singer. In August 2009, she toured Australia again and sold 'Katy Perry' branded apparel and merchandise at her concerts. This was done in full knowledge of the fact of the appellant's registered trademark."
Justice Steward noted that Mr Jensen had written to Katy Perry, expressing the view that "the public would not confuse your Katy Perry branded tour merchandise with this lady's clothes".
"Indeed, he gave evidence at trial that since then he had not become aware of any cases of confusion," Justice Steward said.
Justice Steward described the actions of Katy Perry's representatives as those of "a persistent or assiduous infringer of the appellant's validly registered 'Katie Perry' mark".
Costs have been awarded in Katie Perry's favour.