Sydney designer Katie Perry wins trademark battle against Katy Perry
In ‘a tale of two women, two teenage dreams and one name’, a Sydney designer has won a landmark trademark battle against US pop sensation Katy Perry.
“This is a tale of two women, two teenage dreams and one name.”
That is how Justice Brigette Markovic began her landmark judgment settling a mammoth trademark case between Sydney fashion designer Katie Perry and worldwide pop sensation Katy Perry.
The reference, of course, to Katy’s 2010 smash hit Teenage Dream, was perhaps a cold blow to the American Idol judge who ultimately lost the case and her cross-claim to her identically-named rival.
Hopefully she is able to patch her wounds before performing at King Charles’ coronation next month.
The designer trademarked the name “Katie Perry” in 2008, the same year Katy, whose real name is Katheryn Elizabeth Hudson, shot to fame in Australia with her hit song I Kissed a Girl.
Justice Markovic found the US pop singer breached trademark law during the Australian leg of her Prismatic Tour in 2014, when she promoted exclusive “merch” available for pre-order, specifically a jacket advertising her new album Roar.
She also broke the law by advertising “Cozy Little Christmas” hoodies, t-shirts, sweatpants and scarfs on her social media, and posting tweets about her pop-up merchandise stores.
The designer told The Australian she was “over the moon” to have won the case, having felt “completely bullied” throughout the “David and Goliath” trial, through which she endured “a brutal cross-examination that I still have nightmares about.”
“This was my dream, I had established my label, I got my trademark, I had done everything that I was told to do,” she said. “Even the judge said that I was naive and opportunistic. It’s like, of course I’m opportunistic. Show me an entrepreneur or business owner that isn’t.”
Katie said she and her family were subjected to bullying outside the court, and were trolled by “keyboard warriors.”
“Some of the things she (Katy) said about me were horrible, personal attacks on me. Which is crazy,” she said.
Asked if she was afraid to take this case to court, Katie said she wasn’t.
“My values are truth and justice. I just kept thinking that it was so wrong. I’ve heard from other small business owners that have had the same thing happen to them,” she said.
“They’ve had a small business and an overseas conglomerate comes in, bullies and intimidates them. And they’re forced to start again.”
In response to Katie’s case, Katy lodged a cross-claim alleging she had a greater reputation than Katie at the time the trademark was established and, on that basis, sought for the designer’s trademark to be cancelled.
Attempting to prove she had an impressive reputation, Katy argued her song Simple had been used on the soundtrack of the film “The Sisterhood of the Travelling Pants” in 2005, and grossed over $US1.3m upon its release in Australia.
She also referenced the November 2007 release of her single Ur So Gay on MySpace, and the fact her song I Kissed a Girl held the top of the Australian charts for six weeks in 2008.
While Justice Markovic conceded Katy had acquired a reputation prior to the trademark being established, she said she was “not satisfied” that, because of the reputation, the use of Katie’s trademark would “be likely to deceive or cause confusion.”
Thus, she concluded Katy did not have the grounds to cancel Katie’s trademark.
Justice Markovic found the singer did not owe any compensation to the designer because she had used the Katy Perry mark in "good faith".
The singer’s firm Kitty Purry, however, is liable for damages because of the sale of clothing during the tour, at the pop-up stores and online.
The parties will return to court on May 10 to decide costs.