The Federal Court proceedings were initiated in 2019 by Katie Taylor, whose birth name is Katie Perry, however, the altercation between Ms Taylor and Katheryn Hudson (who takes the stage name Katy Perry) began around 10 years earlier when the singer tried to belatedly prevent the designer's Australian trademark application for her clothes from being registered.

Katie Taylor held her position and the singer abandoned her opposition to the registration of the Australian trademark application.

The trademark was registered to the designer as of 29 September 2008, which posed a barrier to registration by Katy Perry, for an Australian trademark application for ‘KATY PERRY’ in class 25 for clothes.

VIEW ALL

Ms Taylor designed and sold clothes under the brand name “KATIE PERRY” since 2007, whilst in 2002, Ms Hudson adopted the name Katy Perry for her professional music career and associated commercial merchandise, and since then, has used that name for such purposes.

For a decade, Ms Taylor did not pursue a case based on the trademark infringement, as she did not have the financial resources.

One day, however, she was made aware of the possibility of the case being funded through a litigation funder. 

Litigation Capital Management (LCM), a global litigation funder, decided to fund the case, and the Federal Court proceedings were commenced on behalf of the designer by Silberstein & Associates in October 2019.

The first, third and fourth respondents in the case are Killer Queen, LLC, Kitty Purry, Inc and Purrfect Ventures LLC – companies associated with Ms Hudson. 

In the case, Ms Taylor alleged that the respondents imported for sale and distributed, advertised, promoted, marketed, sold and manufactured in Australia, Registered Goods bearing the word mark KATY PERRY in Australia from August 2009.

Ms Taylor alleged that by doing so, the respondents infringed the Applicant’s Mark pursuant to s 120 of the Trade Marks Act 1995 (Cth).

Ms Taylor submitted that Ms Hudson’s conduct in using the Katy Perry Mark on clothes in Australia was flagrant and maintained that there is no evidence of the use of the Katy Perry Mark on clothes in Australia until after Ms Hudson became aware of Ms Taylor’s trademark application.

Ms Taylor also alleged “Ms Hudson sought at first to bully Ms Taylor out of her application for the Applicant’s Mark and then to have her co-exist, which Ms Taylor refused to do.”

Markovic J stated in the judgment: “I do not accept the characterisation of the correspondence which was first sent to Ms Taylor as bullying in nature.”

“The two women were running their respective businesses with each wishing to use substantially the same trademark for the same or similar goods,” stated Her Honour. 

Markovic J concluded that after knowing about the Applicant’s trademark, “Ms Hudson (and the respondents) proceeded with the original plan to sell clothes bearing the Katy Perry Mark in Australia. 

“They took a calculated risk in doing so.”

“Their action was deliberate in the sense that they did not let the fact of the Applicant’s Mark stand in their way, but proceeded notwithstanding that obstacle,” stated Her Honour.

“Knowing their conduct was infringing conduct, they engaged in what can only be described as a “calculated disregard of [Ms Taylor’s] rights,” stated Markovic J.

Ms Hudson did not give evidence in the proceeding, and instead, her talent manager, Mr Jensen, gave evidence on her behalf.

Mr Jensen stated that when engaging in the sale of clothes bearing the trademark, he did not believe that members of the public would confuse the two trademarks and that it would not hurt Ms Taylor’s brand.

In response to Mr Jensen's assertion, Markovic J said, “It does not excuse their conduct, but it ameliorates it in some way in that it demonstrates that there was no cynical pursuit of a benefit on their part.

The Federal Court found that Ms Hudson’s corporate interests had indeed infringed upon Ms Taylor’s trademark through sales of clothing during an Australian concert tour, and through website sales to Australian consumers. 

The final orders are yet to be made, however, Her Honour found that Ms Taylor is entitled to an injunction to restrain the singer's corporate interest from continuing to infringe her trademark.

Her Honour also concluded that the infringing conduct was such as to attract an award for additional damages on account of the singer's and her corporate interests' "calculated disregard" of the designer's rights.

Markovic J commented that there was absence of any evidence that the singer or any of her corporate interests believed they had an arguable defence.

Her Honour stated that the "purpose of an award of additional damages is to mark the Court's disapproval of the infringing conduct".

Silberstein & Associates said in a statement, “Ms Taylor is delighted by the outcome which she considers a win not only for herself, but for Australian small businesses.”