Trademark clash: Katie Perry vs Katy Perry

Analysis by Dr Alexandra Allen-Franks and Associate Professor Rob Batty, co-directors of the New Zealand Centre for Intellectual Property at the University of Auckland Law School.

Choosing a name for a baby is an important task in any new parent’s life. For some people, that chosen name will become known all over the world, trademarked, and associated with particular products. Think Jamie Oliver cookware, Estee Lauder cosmetics or Ralph Lauren fashion. Or closer to home, Michael Hill jewellery or Mike Pero mortgages.

A recent legal case between pop star Katy Perry (birth name Katheryn Hudson) and Australian fashion designer Katie Taylor (birth name Katie Perry) shines a spotlight on the tricky terrain of trademarking names and the disputes that can arise.

Trademarks indicate to consumers which person or entity is responsible for putting goods on the market or providing a particular service. But what happens when you want to start a business and you share your name with a famous brand, a famous person, or simply a business that has started using the name first? Should you be prevented from using your own name for your business just because you share it with someone else?

When it comes to starting a business using your own name, the answer under registered trademark law is that “it depends”. The first to register a name will typically be able to prevent others from using the same or similar name on the same or similar products. However, Australian trademark law provides a defence to trademark infringement when a person uses their own name in “good faith”. New Zealand trademark law has a similar defence.

The recent dispute involving the singer known as Katy Perry illustrates the issues that can arise under trademark law.

In 2007, Australian designer Katie Taylor, whose birth name is Katie Jane Perry, started a fashion label under the name Katie Perry. She applied to register the trademark Katie Perry (concerning clothes) in Australia in September 2008.

At around the same time, the career of Katheryn Hudson, the musical artist we know as Katy Perry, was taking off. Also around this time, her talent management agency started selling Katy Perry merchandise.

The singer’s album One of the Boys was released in June 2008, and as she prepared to visit Australia as part of her worldwide tour to promote the album, she found out about the Katie Perry trademark. Katy Perry’s lawyers tried to reach an agreement for each party to use their own trademark without legal problems. But the Australian fashion designer said no.

Katy Perry subsequently toured Australia several times. Katie sued Katy and three associated companies for trademark infringement in 2019. After all, the singer had been selling merchandise bearing the name Katy Perry in Australia for years, and the clothes designer owned the mark Katie Perry.

In a judgment released on November 22, the full Federal Court confirmed that the I Kissed a Girl singer could rely on the “own name defence” under Australian trade mark law, even though Katy Perry is not her real name. What matters is the name by which the person is known.

The court also confirmed that the singer’s use was in “good faith” in all the circumstances, taking into account that the singer had an honest belief that no confusion was likely; Katy Perry branded merchandise had been developed and sold overseas before becoming aware of the Australian fashion designer’s trademark, and there was no intention by the singer to divert trade away from the local business owner or to trade off her goodwill.

In interpreting good faith, Australian law focuses on the subjective beliefs of a person in using a trademark. New Zealand’s equivalent section takes a more objective approach: would a reasonable person, armed with all the information the defendant knew, say the use was honest?

The defence can be used by companies in Australia but not in New Zealand. Nevertheless, it’s possible a similar result would be reached under New Zealand trademark law.

Applying this approach, you are more likely to be able to use your name as a trademark if it’s the name you are known by and if you started using your name without an intention to trade off a name or to damage a well-known name (and a reasonable person in your shoes would agree).

For example, if you are born and known as James Beam and want to start selling your own whisky, using Jim Beam as your trademark is unlikely to pass muster with the courts.

For Katy Perry, that the case has been litigated seems unfortunate given that there was no intention to trespass on the business owners’ rights and divert her customers. For the fashion designer, the end result is undoubtedly a crushing one.

Not only did the court uphold the pop star's defence, it found that the fashion businesses' trademark shouldn't have been registered and should be cancelled. The court concluded by pointedly observing that agreeing to the rejected coexistence agreement would have been “an excellent outcome for both parties” — but it was “no longer possible to return to the time of peaceful coexistence”.