Full Circle: Katie Perry Gets Her Trademark Back In Australia, Court Says No Risk Of Confusion
from the full-circle dept
It’s been a long and winding road to mostly get us right back to where we started in the battle between pop star Katy Perry and Aussie clothing designer Katie Perry. If you’re not familiar with this saga, here is a brief summary. Note that I will be mostly using only Katy and Katie when naming the players here to avoid confusion.
Katie Taylor is the real name of the Aussie designer, but she began selling clothing under the name “Katie Perry” in 2008 and secured a trademark for the name in Australia for clothing. While Katy’s team initially sent a C&D to Katie’s business around that same time, it appears nothing came of that C&D, even as the singer went on a worldwide tour that included Australia in 2014. That’s when Katie sued Katy, arguing that clothing merch sold on her local tour constituted trademark infringement, as the public might be confused between the two entities and who was producing what and for whom. She won her initial lawsuit, but Katy appealed and won, with the court not only clearing her of trademark infringement but also canceling Katie’s trademark entirely. Rather than leaving well enough alone, Katie appealed that ruling to Australia’s High Court.
And that brings us to an unlikely present, in which the High Court partially agreed with Katie’s appeal, reinstating her trademark, but not ruling that Katy Perry infringed upon it. I’m going to stay away from the first part of CNN’s post on the matter, because it does a horrible job of framing all of this, mostly in that in paints Katie Perry as some kind of underdog victim in all of this when she very much is not. But as for the ruling itself:
But on Wednesday, Australia’s High Court overturned the ruling, arguing the cancellation of the trademark was not warranted, and the use of the “Katie Perry” trademark was not likely to deceive or cause confusion.
Taylor said the court battle was a long and difficult process, but she did it to show that trademarks are there to protect small businesses, not just large brands.
“So many people said to me, like, why don’t you just give up? It’s not worth it. I really believe in standing up for your values. Truth and justice are part of my core and my values.”
And this is where I’m once again frustrated with CNN’s posture in its reporting. Katie sued Katy. That’s how this whole episode really started. Katie talking about how she is glad this all isn’t hanging over her head when she started the lawsuit that led to all of this is insane. This was a self-inflicted wound of epic proportions on a timeline equally crazy.
But the key part to me is that the logic behind ruling that Katie can have her trademark back is that Katie’s and Katy’s trademarks can coexist without any real concern for deception or confusion. That same logic is what I stated at the start of this whole ordeal as the reason this trademark lawsuit battle never should have been started in the first place.
Started by Katie Perry, I’ll remind you. And so we’ve come full circle, with both groups having their trademarks but without any actual infringement having occurred. It’s been a wild, stupid trip, but I guess we got where we were going: right back to where we started.
Filed Under: australia, katie perry, katy perry, trademark
Comments on “Full Circle: Katie Perry Gets Her Trademark Back In Australia, Court Says No Risk Of Confusion”
And a fine job you’re doing.
Re:
It should have been Perry and Taylor. I kept mixing them up between the headline and the article and wanted to know when the singer was getting her trademark back…
Perry confusing
I might be mistaken but I can’t escape the feeling that there’s a tinge of “our famous singer done wrong” in this article.
First, let’s look at “who started it?” It began with the threat of legal action. The singer “started it” by issuing a cease and desist to the fashion designer. You seem to overlook that step merely because the singer didn’t follow up with any court action. The singer choosing not to follow-up left the designer in legal limbo. It looks to me that, in the absence of further moves by the singer, the designer sought legal certainty. That’s something we are all entitled to do. It’s one of the functions of courts.
Second, what the High Court decided was that just being extremely well known in one field does not entitle the singer to claim exclusive rights over the name in every field of human endeavour. At the relevant time, the singer was known as a singer, not a fashion designer. The fact that singers go on tours, and tours come with merchandising opportunities, some of which involve branded clothing, does not mean the singer’s rights to the name automatically override the designer’s rights to use a very similar name, particularly as the designer’s clothing line already existed and the brand was trademarked at that point. The High Court found that there was no risk of confusion when the singer used the name as a performer vs the designer using the name on apparel. Confusion would only arise if the designer took up singing and tried to develop a presence using that name, or if the singer started marketing apparel using that name, which is what happened.
That’s the bit the High Court said the Federal Court got wrong. The Federal Court now needs to take that decision on board and begin with the fact that the designer is entitled to her trademark for apparel. It seems to me that if, in the original case, the Federal Court found in favour of the singer and ordered the designer’s trademark cancelled, it’s implied that the court must have concluded that the two apparel brands were sufficiently similar and confusing for an infringement to have occurred. Whether the Federal Court will maintain its original position that an infringement occurred and, from there, conclude that the singer committed the infringement, or will reverse its earlier decision and find that neither party infringed and that the two brands can co-exist, is something we will have to wait to see.
Re:
“First, let’s look at “who started it?” It began with the threat of legal action. The singer “started it” by issuing a cease and desist to the fashion designer. You seem to overlook that step merely because the singer didn’t follow up with any court action. The singer choosing not to follow-up left the designer in legal limbo.”
I didn’t leave it out; I brought it up specifically when describing how the larger story started.
I’ll also say that the designer appeared to “live in limbo” just fine for 6 whole years without any problems. A detail I DID leave out, but which is available in previous posts and source material, is that the designer attempted to register her trademark and Katy Perry opposed it initially, but eventually backed down and allowed the mark to go through unchallenged.
IOW, all the designer had to do was leave well enough alone and this tale of woe would have ended there. Instead she sued.
So, yes, she’s the impetus of the real meat of this story.
Re: More context
These are all good notes, but it actually gets worse for the singer after reading the CNN article and others. Techdirt says, “While Katy’s team initially sent a C&D to Katie’s business around that same time, it appears nothing came of that C&D,” but that’s not true.
Per CNN: “After the 2009 letter, the two sides attempted to come to a settlement but they could not agree on the terms, according to the court filings.
“Taylor was granted the trademark for clothing and Perry amended her application to include just music and entertainment, according to the court ruling.”
This wasn’t just a C&D; the singer’s lawyers filed an opposition to Taylor’s trademark application. They tried to get her trademark canceled before it could even be granted. Which, since the singer did not have an Australian trademark at the time, was a ballsy but ultimately doomed opposition.
Furthermore, while they may not have agreed on terms with each other, this right here says that, as far as the Australian trademark office is concerned, Taylor got the trademark on clothing and when the singer eventually got an Australian trademark in 2011, she voluntarily excluded clothing for her trademark, making it just music and entertainment. This essentially acknowledges that she knew selling clothing would violate Taylor’s trademark.
Finally, and I’m stepping somewhat out of my sphere of knowledge here, but assuming Australian trademark law works like American trademark law, a trademark has to be defended. It’s not like copyright where you just have it and can defend it–or not–on your own whim. Trademarks must be used and infringements attacked for trademarks to remain valid. That’s literally an argument the singer’s lawyers are making in this case: that Taylor knew about the supposed infringement for many years and didn’t litigate, therefore her trademark should be invalidated. Taylor apparently couldn’t afford the lawsuit until recently, but courts generally don’t care about the cost of litigation (creating an “access to justice” issue, but that’s a different topic).
The only possible criticism I can see against Taylor is that the singer offered her a “coexistence agreement” and she turned it down. But honestly, that’s probably the correct move unless that agreement was extremely narrow. Pop stars have a tendency to launch clothing lines beyond simple merch, and a broad coexistence agreement could allow the singer to move from “I’m just selling concert merch” to “I’ve launched a luxury loungewear clothing line that directly competes with Taylor’s clothing, and I’m global superstar Katy F’in Perry so I win that fight.”
It seems like Techdirt just generally hates the idea of trademarks, and wants trademarks to have as little power as possible. I generally think the system we have is often pretty messed up. However, trademarks have a vital purpose of preventing customer confusion. The abuse of the system, when it happens, is nearly always some major company with deep pockets throwing their weight around to trample over small players. A small local business who just wants to sell products in her category under her own name without a global superstar trampling her rights or pushing her out of that market while using her name? That’s not abuse of the system. Abuse of the system was when the singer sent a C&D and opposed her trademark filing even before the singer had an Australian mark. Everything since then has been reasonable defense.
Maybe the seamstress should name herself something that can’t be mistaken for any popular musician. For instance, she could brand herself as the Swift Tailor.
The only way I could see confusion between a musician and a seamstress? It’s the fault of the sewing machine… a Singer.
Leaves a warm glow...
But at least some lawyers got to make a chunk of cash.
And isn’t that what it’s really all about?
Katie Taylor is infringing on Katy Perry’s name and fame. That’s clear enough.
Katy sent the C&D first, but Katie is somehow the one who started it? Make it make sense.
Re:
If you can read, it makes perfect sense.
Why did Taylor choose Katie PERRY to be her brand?
Re: It's her birth name
Her birth name was Katie Jane Perry. I can think of at least one reason why a person might change her family name and I’m sure you can too.
It also should not be forgotten that Katy Perry is a stage name. The singer is Katheryn Elizabeth Hudson.
The issue is, given two items of apparel, one branded Katie Perry, the other branded Katy Perry, is an ordinary consumer likely to be confused? The courts seem to have decided the answer is “yes”. The High Court has just upheld the Katie Perry trademark. The current name of the person who owns that trademark is irrelevant.
Katie Taylor should obviously pivot to mops.
I know I’d buy a Taylor Swiff.
trademarks are there to protect small businesses, not just large brands.
And your brands can do just fine without them.
Oh, and they are meant to protect consumers, jackass. Although we have long since moved past that to them being utterly irrelevant as identifiers, to be bought, sold, and rented IP, where knockoffs are bad but renting a corporate brand to some random other outfit to put on products – including things the original company never made – is a-ok.
Fuck trademark.