The case of Katy and Katie Perry and trademark infringement
25 November 2020
Earlier this month, the Australian Federal Court learned that singer and songwriter Katy Perry whose full name is Katheryn Elizabeth Hudson, will not provide evidence in a trademark infringement lawsuit filed against her, as reported in nme.com.
The lawsuit was filed by Katie Jane Taylor, an Australian fashion designer whose maiden name is Katie Perry. Taylor had registered the name as a trademark in Australia in September 2008 for her own clothing brand.
Meanwhile, the American pop singer had begun selling apparel and accessories in Australia bearing an identical mark via her company Killer Queen LLC, hence the trademark infringement case. The merchandise included pyjamas, headbands and necklaces.
The legal battle between the two parties traces its roots to 2009 when lawyers for Hudson opposed Taylor’s registration of the trademark Katie Perry. The singer-songwriter’s camp later withdrew their opposition.
Fast forward to October 2019 and it was Taylor’s turn to slap Hudson with charges.
“On its face, Katie Taylor enjoys the exclusive right to use the mark Katie Perry in respect of clothes. Use of the name Katy Perry for clothing by Killer Queen, LLC appears to constitute a direct infringement, but use for other goods such as jewelry may prove more difficult to sustain as it would involve an indirect infringement claim,” said Janette Li, an associate at Davies Collison Cave in Melbourne.
“Indirect infringement only arises where use of the mark would be likely to deceive or cause confusion, and the singer Katy Perry’s reputation may impact on that assessment,” explained Li.
According to Hudson’s lawyers, they are using the name Katy Perry in good faith.
They also filed a cross-claim stating the Katie Perry trademark may be cancelled since the pop singer had already established a reputation in Australia even before Taylor registered the mark.
Ian Drew, a principal at Davies Collison Cave also in Melbourne, said there is a defence to an infringement claim where the defendant is able to show use of the mark in good faith.
“Interestingly, the user of the mark is the company Killer Queen LLC,” said Drew. “Ms. Perry will need to demonstrate why the company should benefit from the own-name defence - as a successor-in-title - and this may prove difficult if there is any break in the chain of title. Adding to the complexity here, Katy Perry’s real name is Katheryn Hudson and Katy Perry is her stage name, so there is quite a bit to consider under the own-name defence.”
As to the possible cancellation of the trademark Katie Perry, Drew said: “There are multiple bases where a registration could be cancelled, including where there is an earlier user, who is the common law owner, or where use is likely to deceive or cause confusion as at the time when the application to cancel the registration was filed. These defences are highly fact-specific so I can’t comment in detail.”
Hearing has been set for November 2021. The singer has said she will not appear in court. Instead, Steve Jensen of Direct Management Group (DMG) will be present. DMG is Katy Perry’s exclusive talent management agency.
Espie Angelica A. de Leon
