Singer Katy Perry has lost her protracted trade mark dispute with an Australian fashion designer after it was found that use of her own name, KATY PERRY, amounted to trade mark infringement.
The Federal Court of Australia held that in promoting and selling clothing in Australia under the trade mark KATY PERRY, the singer had infringed an Australian trade mark for KATIE PERRY, registered in Class 25 for “clothes”. In this article, we unpack the key legal issues and practical lessons from the decision for brand owners to consider.
Katie Jane Taylor is an Australian fashion designer and the registered owner of the word mark KATIE PERRY in Australia respect of “clothes” since September 2008. However, Ms Taylor has designed and sold clothes under the trade mark since about 2007.
Katheryn Elizabeth Hudson, well-known professionally as ‘Katy Perry’, adopted the stage name in 2002 for the purposes of her professional music career and associated commercial merchandise licensing activities, and, since that time, has used that name for those purposes. Ms Hudson along with her entities, Killer Queen, LLC, Kitty Purry, Inc and Purrfect Ventures LLC, were all respondents in the Court proceedings.
Both Ms Hudson and Ms Taylor have registered marks on the Register for KATY PERRY and KATIE PERRY, respectively, however in different classes. The parties have been known to each other for some time, including by way of an opposition to Ms Taylor’s Australian application for the KATIE PERRY mark in 2009 and related negotiations. Fast forward until now, the Federal Court decision.
Federal Court Decision
Trade mark infringement
The Court held that Ms Hudson and her entity, Kitty Purry, Inc, had infringed Ms Taylor’s KATIE PERRY mark, as a result of certain instances of use of a deceptively similar name, KATY PERRY, as a trade mark, to promote clothing via various social media channels and for the provision of sales of clothing merchandise in Australia during Ms Hudson’s 2014 Australian tour, at pop-up stores and on a website.
Use of a trade mark on a website outside Australia
The Court considered the issue of whether use of a trade mark on a website based outside Australia constitutes infringing use for the purposes of Section 120 of the Trade Marks Act 1995 (Cth). It was held that, once orders for the alleged infringing goods from Australia are accepted on an overseas based website, the website proprietors are considered to have intended to use, and in fact have used, the trade mark in issue in Australia. Confirmation pages and emails associated with the orders might involve the use of the mark in issue in relation to those orders in Australia.
Ms Hudson as a joint tortfeasor
The Court was not satisfied that Ms Hudson, in her personal capacity, was a joint tortfeasor in respect of the infringement. The issue of whether Ms Hudson was a joint tortfeasor in her personal capacity as a director of her companies was considered, and whether she engaged in a common design in respect of, or counselled, directed, or joined in, the infringement. Mere facilitation of infringing conduct is not sufficient. The Court referred to previous Australian decisions, where it was held that in order for a director to be jointly liable with the company as a tortfeasor, the director must be shown to have directed or procured the tort, or he or she must have a close personal involvement and must be personally involved in the commission of the unlawful act. Further, the director must be acting beyond his or her proper role as a director. The Court concluded that it was not established that Ms Hudson in her personal capacity, or as a director, was a joint tortfeasor.
Clothes vs Footwear
A question arose as to whether certain types of merchandise sold in Australia bearing the infringing mark were clothes or goods of the ‘same description’ as clothes as required by the Act. Both parties relied on expert evidence. Ms Taylor’s expert evidence considered footwear to be clothing, whereas Ms Hudson’s expert evidence concluded that ‘clothes’ does not refer to footwear or vice versa and that department stores selling both clothes and footwear typically display these product categories in different areas of the store.
It was held that footwear are not clothes as both goods serve different purposes – that is, clothes protect and cover the body, whilst shoes protect the feet. The Court noted the distinction in Class 25 between clothing, footwear and headgear. It supported a construction of clothes which excluded footwear and headgear and was limited to garments that covered the body but not the extremities of feet or the head.
It therefore follows that footwear is not of the ‘same description’ as clothes. It was also held that hats, headwear, decorative masks, headgear, novelty jewellery, wristbands, bracelets, necklaces, handbags, purses, bags and backpacks are all not goods of the same description as clothes.
This was an interesting point in the case, especially since many manufacturers often produce both clothing and footwear products under the same brand.
Use of own name in good faith defence
Ms Hudson and her entities also tried to rely on the use of her own name in raising the ‘good faith’ defence – that is, a registered trade mark is not infringed when a person uses in good faith their own name. However, only Ms Hudson in her personal capacity could rely on the defence where she was held to be a direct infringer. The Court concluded that, on a proper construction of this defence, neither a third-party (for example, a licensee) or a joint tortfeasor can take advantage of the defence.
This meant that none of Ms Hudson’s companies, Killer Queen LLC, Kitty Purry Inc. or Purrfect Ventures LLC could rely on the defence in respect of each of their infringing conduct. This was due to the requirements of the defence, in that the name in question must be that of the person using the infringing mark and the person who is using the infringing mark must be directly using the mark.
The Federal Court’s decision provides several takeaways for brand owners to consider, including:
- Use of a registered trade mark on a website based outside Australia may constitute infringing use in Australia for the purposes of Section 120 of the Trade Marks Act 1995 (Cth) if Australian consumers can place orders for products on the website .
- In order for a director to be held jointly liable with the company, the director must be acting beyond his or her proper role as a director.
- ‘Clothing’ is not the same as ‘footwear’ in Class 25, nor are they of the same description.
- A person can only rely on the use of his or her own name as a defence if they have themself directly used the infringing mark. Neither a third-party (for example, a licensee) or a joint tortfeasor can take advantage of the defence.
Ms Hudson and her companies have appealed the ruling so it’s possible we will see more fireworks in this dispute in the near future.
If you are interested, you can read the full judgement here.