Katy Perry found to have infringed Australian designer’s trademark

The Reasons for Decision of Her Honour Justice Markovic aptly opens with: “This is a tale of two women, two teenage dreams and one name.”

Although the Federal Court proceedings were initiated in 2019 by Katie Taylor, whose birth name is Katie Perry, the battle between these two women began around 10 years earlier when the singer tried to belatedly prevent the designer’s Australian trade mark application in class 25 for clothes from being registered. The singer also engaged Australian legal representatives to try to force the designer to cease and forever desist from using the mark.

The designer held firm, however, and the singer ultimately abandoned her belated opposition to registration of the Australian trade mark application. The trade mark was subsequently registered to the designer as of 29 September 2008 and posed an insurmountable barrier to registration by the singer of an Australian trade mark application for KATY PERRY in class 25 for clothes.

What was a period of intense communications between the singer’s representatives and the designer then quickly fizzled. Despite being aware of the designer’s Australian trade mark rights, the singer and her corporate interests decided, nevertheless, to proceed with using the mark KATY PERRY on clothes and related goods in Australia.

Although the designer was aware of the infringement, her business is only small, and she did not have the financial resources to enforce trade mark. For the next decade or so, the designer watched helplessly as her rights were infringed without care.

One fortuitous day, the designer was presenting to other fashion designers, and told them her story. A member of the audience approached her after the presentation and provided her with the details of a lawyer, Rob Silberstein, of S&A Law, suggesting that the designer revisit the possibility of taking legal action against the singer. S&A Law introduced the designer to the concept of litigation funding – something that she had never previously heard of – and which she promptly realised was a means by which she could finally take steps to enforce her rights.

Litigation Capital Management, LCM, a global litigation funder, decided to help the designer, and the Federal Court proceedings were commenced on behalf of the designer by S&A Law in October 2019.

The designer has been successful.

Not only did she wholly defeat a forceful and sustained cross-claim to have her trade mark invalidated, but she also defeated all but one of the singer’s and her corporate interests’ defences. Further, the Federal Court has found that one of the singer’s corporate interests has infringed the designer’s trade mark through sales of clothing during an Australian concert tour and through website sales to Australian customers.

Although final orders are yet to have been made, in the Reasons for Decision, Her Honour Justice Markovic has found that the designer is entitled to an injunction to restrain the singer’s corporate interest from continuing to infringe her trade mark, and 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, coupled with the absence of any evidence that the singer or any of her corporate interests believed they had an arguable defence. Her Honour noted that the “purpose of an award of additional damages is to mark the Court’s disapproval of the infringing conduct”.

Ms Taylor is delighted by the outcome which she considers a win not only for herself, but for Australian small businesses.