Case summary: Taylor v Killer Queen, LLC (No 5) [2023] FCA 364 (Katy Perry / Katie Perry)

Author: Ian Aldridge, Progressive Legal

FACTS:

• Applicant (Taylor) designed and sold clothes under the brand name ‘KATIE PERRY’ in Australia. 
• Taylor had the registered trademark ‘KATIE PERRY’ for goods in class 25 for clothes.  
• Respondent (Hudson) used the name ‘KATY PERRY’ for her commercial merchandise as a musician.  
• The first, third and fourth respondents to the proceeding are respectively Killer Queen, LLC, Kitty Purry, Inc and Purrfect Ventures LLC.  They are companies associated with Hudson. 
• The respondents imported for sale and distributed, advertised, promoted, marketed, sold and manufactured registered goods under the name ‘KATY PERRY’ in Australia.  
• The applicant and the respondents were running their respective businesses, both using substantially the same trademark for similar goods. 
• Taylor argued that the respondents by conduct have infringed the Applicant’s Mark and are liable as joint tortfeasors. 
• Taylor argued that Hudson’s conduct in using the Katy Perry Mark on clothes in Australia was flagrant and that there is no evidence of the use of the Katy Perry mark on clothes in Australia until after Hudson became aware of Taylor’s trademark application. 
• The respondents argued that their use of the Katy Perry Mark was not likely to cause confusion between the two (s 43 Trade Marks Act), was the use of one’s own name in good faith (s 122(1)(a) Trade Marks Act), and that they had established a reputation in Australia in the trademark Katy Perry before the priority date (s 60 Trade Marks Act). 

ISSUE: 

• Whether Katy Perry (Hudson) infringed the Applicant’s Mark pursuant to s 120 of the Trade Marks Act 1995 (Cth)  

DECISION (MARKOVIC J):  

• Taylor is entitled to an injunction to prevent Hudson and her corporate interests from further violating Taylor’s trademark. 
• The infringing conduct attracted an award for additional damages.  
• Kitty Purry is liable as a joint tortfeasor in the infringement of the Applicant’s Mark in advertising, offering for sale and selling clothes with the Katy Perry Mark. 
• Hudson has established an entitlement to rely on one of the pleaded defences, s 122(1)(a)(i) Trade Marks Act.  
• Matter stood over for case management in relation to relief and damages including additional damages.  

REASONING: 

• The purpose of an award of additional damages is to mark the Court’s disapproval of the infringing conduct.   
• The question of whether the conduct was flagrant requires consideration of whether the conduct involved a deliberate and calculated infringement; a calculated disregard of Taylor’s rights and a cynical pursuit of benefit.   
• The conduct was ‘deliberate’ because the respondents did not let the fact of the Applicant’s Mark prevent them from proceeding to sell clothes bearing the Katy Perry Mark in Australia.  
• There was a ‘calculated disregard’ for the designer’s trademark rights because they knowingly engaged in infringing conduct.  
• Hudson knowingly decided not to attempt to satisfy the Registrar. She could have registered the Katy Perry Mark in class 25 for clothes by establishing, for example, honest concurrent use as she was invited to do.  Rather she chose not to pursue this route and instead, amended her application for registration of the Katy Perry Mark by excluding class 25. 
• Her Honour established that use of Hudson’s own name was in good faith. 
• The evidence provided by the respondents does not indicate that the respondents were acting in a scandalous way but leads to a belief on their part that there was in fact no confusion in their selling clothes bearing the Katy Perry Mark in Australia. 
• While Her Honour was satisfied that the Katy Perry Mark had acquired a reputation in Australia at the Priority Date, it was not satisfied that, because of that reputation, the use of the Applicant’s Mark would warrant deception or confusion. 
• At the time of first use there was no reputation in the Applicant’s Mark and, even many years later, there was still limited reputation of the Applicant’s Mark.   
• While this does not justify their conduct, it is somewhat mitigated by this factor in that it demonstrates that there was no cynical pursuit of a benefit on their part.