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The Sydney fashion designer behind the Katie Perry label has won her epic trademark dispute with US pop star Katy Perry, after a legal battle lasting almost 17 years.
In a majority decision on Wednesday, Australia’s high court found the designer’s label did not breach trademark laws and was not likely to cause confusion, regardless of the singer’s reputation when it was registered.
The fashion designer Katie Taylor, who was born Katie Perry, applied to register that as a business name in April 2007. She had not heard of the singer at the time, the court said.
The designer subsequently applied to register the “Katie Perry” trademark for the sale of clothes in September 2008 – a few months after the release of Perry’s hit debut single, I Kissed a Girl.
When the singer – whose real name is Katheryn Hudson – performed in Australia for the first time, her team created an online store selling “Katy Perry” branded merchandise worldwide in October 2008.
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The epic legal battle began in May 2009, when the singer filed a notice of opposition to the registration of Taylor’s trademark and sent cease and desist letters to the Australian designer.
Despite this, the singer’s manager, Steven Jensen, at the time told Perry that her team had “not tried to keep [Taylor] from trading under her name”.
“We … have not tried to keep her from trading under her name, and have certainly not sued her for trademark infringement,” Jensen said in an email to Perry in June 2009, according to the high court’s judgment.
Jensen also tried to convince Perry to issue a statement, telling the singer “as is common in Australia, the tabloids have picked this up and made it into a ‘story’”.
But the singer told Jensen she wanted him to “keep me outta it entirely”.
“Stupid b*tches. I wouldn’t have even bothered with this [if] mtv hadn’t picked up this silliness,” Perry wrote back in an email, cited in the judgment.
“Dumb bitch! Rawr!”
‘Very much deliberate’
In July 2009, “Katie Perry” was formally entered into the Australian trademark register, which the designer used on her clothing range and to promote her brand.
The singer’s “Katy Perry” trademark, which did not extend to clothing, was registered in Australia in November 2011.
Nearly eight years later, Taylor sued the singer in the federal court, alleging her trademark had been infringed upon by the sale of “Katy Perry” branded clothes in Australia.
Perry applied – by way of a crossclaim – for the designer’s trademark to be cancelled, alleging that she had already had a big enough reputation in Australia in 2008 and that Taylor’s label would be “likely to deceive or cause confusion”.
Taylor won the case in the first instance in 2023, with the court ruling that the singer’s label, Kitty Purry, had engaged in trademark infringement during her 2014 Prismatic tour.
However, the designer lost on appeal in 2024, when three appeal judges unanimously overturned the original findings and upheld Perry’s crossclaim, ordering that Taylor’s trademark be deregistered.
Taylor then took her case to Australia’s highest court.
On Wednesday, three high court justices – Jayne Jagot, Simon Steward and Jacqueline Gleeson, sided with Taylor.
The justices rejected the argument by Perry’s lawyers that the singer had already acquired a significant reputation in Australia by the time Taylor applied for the “Katie Perry” trademark in 2008, saying this didn’t extend to clothing.
The court ruled that Perry’s label, Kitty Purry, and her international merchandise distributor, Bravado, had been “assiduous infringers” of Taylor’s trademark.
The judges noted that most of the merchandise Perry had sold in Australia was clothing even though she had voluntarily registered the “Katy Perry” trademark to exclude clothes, which they described as “very much deliberate” conduct.
After the ruling, a spokesperson for the singer said: “Katy Perry has never sought to close down Ms. Taylor’s business or stop her selling clothes under the KATIE PERRY label.”
“Today, by a 3:2 decision, the high court determined that Ms. Taylor’s trademark can remain on the register. The court [also] sent the case back to the Full Federal Court to determine issues raised by Katy Perry, including Ms. Taylor’s 10-year delay in bringing her case against Katy Perry,” the spokesperson said.
In a statement posted on the Katie Perry website, Taylor said the decision showed that “even small Australian businesses” could stand up for their rights.
“This case has never just been about a name,” she said.
“It has been about protecting small business in Australia, for standing up for what is right and showing that we all matter.”
