What happens when a name becomes the basis of a battle of identity, commerce, and creativity? This question lies at the heart of the dispute between the pop sensation Katy Perry, the famed ‘I Kissed a Girl’ singer, and a simple fashion designer, Katie Perry from Australia. In a courtroom drama that has captivated the world’s attention, the singer and the designer are fighting over trademark rights, each vying for their place in a world where names are more than just labels; they are brands, reputations, and legacies. This issue is more than a common name; it is about the clash of celebrity power and business resiliency, bringing serious concerns about intellectual property, fairness, and the cost of maintaining one’s identity.
Recently, in November 2024, Katy Perry finally won the trademark appeal in the case against Katie Perry, the court ruling in her favour this time. The case is officially titled Taylor vs Killer Queen LLC.
THE CASE IN BRIEF
The story started with Sydney-based Katie Perry, a fashion designer who owned a trademark of her name since 2008 in Australia to cover her clothes, bringing action against pop superstar Katy Perry, born Katheryn Hudson, for selling merchandise under the name Katy Perry during her tours in Australia.
In 2007, Australian designer Katie Taylor, born Katie Jane Perry, debuted her fashion company “Katie Perry.” The following year, in September 2008, she applied to register “Katie Perry” as a trademark in Australia for use on clothes.
Around the same period, American singer Katheryn Hudson, also known as Katy Perry (though notice the spelling difference (if any) – Katy vs Katie!) was gaining popularity. Her talent management company began selling goods under the “Katy Perry” moniker to help fund her budding musical career. During the promotion of her famous album in June 2008, her team became aware of the trademark in Australia.
Katy Perry’s legal team attempted to reach a deal with the designer, suggesting that both parties could use their names without legal ramifications. However, the designer turned down the concept. Despite this, Katy Perry toured Australia several times, and her stuff continued to be marketed there.
In 2019, the designer, Katie Perry, filed a trademark infringement lawsuit against Katy Perry and three connected organisations, claiming that the singer’s items marketed in Australia over the years infringed on her exclusive rights as the owner of the “Katie Perry” trademark in the garment industry.
In effect, Katie Perry claimed that the merchandise sold was confusing consumers so much so that it infringed her exclusive rights over the trademark within Australia’s fashion industry. Counsel for Katy Perry disputed the allegation by asserting that the use related primarily to the pop singer’s musical vocation, with no intention being directed toward the fashion sector.
THE LAW
Katy Perry used the defence of honest concurrent use, used in Australia, wherein it requires evidence under para 44(3)(a) of 1995 Trademark Act that the later applicant believed their mark would not cause consumer confusion or deception. The defence to infringement that a person (even a company) uses its own name in good faith as a trademark only applies to word marks. The defence excludes stylized marks and any use(s) other than the claimed infringer’s complete company name, minus any corporate indications (such as LLC, Pty, or Ltd).
In this instance, the “own name defence” was a significant component of the ruling. Individuals may use their own name as a trademark under the Trade Marks Act 1995 in Australia, even if it is identical to a registered trademark, as long as the usage is in good faith and does not mislead customers about the source of the products or services. This provision was critical for Katy Perry because the court recognized that, while “Katy Perry” is not her birth name, it is the moniker by which she is widely known and has been used in connection with her merchandise worldwide. This enabled her to use her own name defence to defend charges of trademark infringement.
The court also emphasized the concept of ‘good faith’ and reiterated that Katy Perry acted in good faith, and hence, she should not be held liable for infringing the trademark.
INDIAN SITUATION
While not directly related to India, the Katy Perry trademark battle has significant implications, particularly with the rise of e-commerce, luxury resale platforms, and ‘dupe’ marketplaces. The frequency of cross-border trademark disputes is increasing as platforms like Amazon and Flipkart link Indian marketplaces globally, as seen with recent cases like Louis Vuitton.
India’s Trade Marks Act 1999, under Section 12, includes the good faith doctrine, protecting actions carried out in good faith. Like Australian law, India also upholds the own name doctrine, allowing individuals to use their own name or surname in business, provided it’s in good faith and doesn’t cause consumer confusion. Section 12 also covers honest concurrent use, addressing factors like good faith, honest use, no likelihood of confusion, and special circumstances, such as businesses operating in different geographical regions.
There have been similar cases using honest concurrent use in India, the earliest being Kores India Ltd. v. M/s Khoday Eshwarsa and Son wherein the court ruled that when deciding on trademark registration based on honest concurrent use, factors such as the validity, extent, and volume of use, likelihood of confusion, documented confusion cases, and potential inconvenience to the parties must be considered.
In the case of Somashekar P. Patil v. D.V.G. Patil, the Indian court emphasized that bonafide use of a person’s own name as a trademark cannot be interfered with. This decision was in line with S.35 of the Trademarks Act 1999, which permits the bonafide use of a person’s name, a defence that even Katy Perry used in her case in the Australian courts. In the famous case of Reddy Pharmaceuticals Ltd. v. Dr. Reddy’s Laboratories Ltd., the court ruled that the defendant’s use of the “Reddy” trademark was not honest or in good faith. The defendant’s use of the mark sought to capitalize on the goodwill and reputation of the plaintiff’s well-known trademark, “Dr. Reddy,” which had gained enormous recognition and secondary meaning in the pharmaceutical sector.
In comparing the two jurisdictions, Indian courts focus heavily on the intent behind trademark adoption, emphasizing good faith. The Reddy Pharmaceuticals case highlighted how bad faith exploitation can harm existing goodwill. In contrast, the Katy Perry case in Australia struck a more balanced approach, weighing honest concurrent use against potential confusion. India’s stricter stance discourages dishonest adoption, while Australia adopts a more nuanced balancing approach. Both jurisdictions also consider the likelihood of confusion and non-registrability of marks.
Celebrities in India, too, are making a prudent move by trademarking their names to protect their identities, although personality rights are not explicitly recognized by law. Courts have taken up, as demonstrated in Anil Kapoor v. Simply Life India & Ors , in which illegal use of Kapoor’s name, voice, and persona was strongly prohibited.
According to the Trademark Act, personal names can be trademarked if they have acquired uniqueness, but fair use is only permitted in good faith—a notion echoed in the Katy Perry case. These decisions demonstrate how the legal landscape changes, allowing celebrities to protect their brand names while controlling misuse.
JUDICIAL FINDINGS AND THE COURT RULING
The Federal Court of Australia ruled in favour of the designer in April 2023, stating that Katy Perry’s merchandise had indeed infringed upon the trademark. The court further concluded that even if the infringement wasn’t deliberate, it still did not comply with Australian trademark laws. The damages to be paid by the pop star’s company to the designer were relatively small.
The same Court initially ruled in favour of Katie Taylor, stating that the singer’s use of the name “Katy Perry” on products sold during her Australian tours violated the designer’s registered trademark, underlining that Taylor had officially registered her trademark in 2008 and was using it in good faith for her clothes business. Despite Katy Perry’s global renown, the court concluded that fame alone cannot trump a lawfully registered trademark in a single area.
The court emphasized that trademarks are territorial and limited to the products or services they protect. Katie Taylor’s trademark was explicitly applied to clothes in Australia, so any overlapping use by Katy Perry in that market could confuse buyers. While Katy Perry’s lawyers contended that her products largely funded her music career and that no intent to violate existed, the court ruled that intent was not the most important factor. Instead, it concentrated on the possibility of consumer confusion, particularly given the similarity in names and product categories (e.g., clothing).
The decision in the appeal was finally given in favour of Katy Perry, the singer. An Australian court issued the finding with three appeal judges rejecting an earlier decision last year that favoured designer Katie Taylor over products sold by the singer during her 2014 Australian tour.
On November 22, the Full Federal Court of Australia found in Katy Perry’s favour, allowing the artist to use the “own name defence” under Australian trademark law. The court concluded that this defence applies to an individual’s publicly recognized name, even if it is not their legal name. The decision also confirmed that the singer used her stage name in “good faith,” citing factors such as her honest belief that her branding would not be confused with the Australian designer’s trademark and her prior use of the “Katy Perry” branding overseas before becoming aware of the trademark in Australia. Furthermore, there was no proof that the singer meant to divert commerce or capitalize on the local designer’s goodwill.
Their comments were as follows: “Whilst some die-hard fans of the I Kissed A Girl singer and co-writer may recognise the incorrect spelling, the ordinary consumer with an imperfect recollection … would be likely to be confused as to the source of the item and wonder whether it was associated with the performer.”
The court stressed that Australian law interprets “good faith” by examining individuals’ subjective beliefs and determining whether their behavior was honest and deceptive. It upheld Katy Perry’s defense and withdrew the designer’s trademark registration, determining that it should never have been issued. The court also emphasized the squandered potential for a cohabitation agreement, which it deemed an “excellent outcome” but was no longer possible owing to the ongoing conflict.
Bravado Merchandising, which creates and distributes Katy Perry-branded clothes, was found to be a joint tortfeasor in the major infringement case. The court considered whether Katy Perry and her related firms (Killer Queen LLC and Kitty Purry, Inc.) were jointly liable as tortfeasors, either by collaborating with Bravado or assisting in trademark infringement. The court agreed with the primary judge that the concurrent use defense is only available to those who “use” the name, and being a joint tortfeasor does not constitute “use.” Katy Perry licensed her trademarks to Killer Queen, not Kitty Purry; therefore, the company remained liable for infringement.
CONCLUSION – A SHARED NAME AND A DIVIDED OUTCOME
This dispute was more than just a name; it was a dispute of identities, the right to do business in their own names, personality rights, etc. The case highlights the intricate balance between protecting intellectual property rights and the resounding global influence of celebrities like Katy Perry.
Even though for Taylor, the case was a lost battle, a financial burden, and a fight to protect her business, the court stuck to the principle of the wider known brand and consumer confusion when it comes to protecting trademarks worldwide. The court did acknowledge that the singer aimed to protect her music business and not attack the designer or deliberately undermine her business. The case sends a powerful message that intellectual property rights are sacrosanct and unique to the creator, and it prevails every time.
About Author: The author Shruti Agarwal, is a penultimate year law student from NMIMS.
Image source: here
