Introduction
In a recent ruling, dated November 22, 2024, the Australian Federal Court’s appeals judges overturned its 2023 decision and recognized Katy Perry’s prior use of her name as a trademark. This case is a compelling study in trademark law providing insights on how personal names can be used for trademarks and how the doctrine of prior use and reputation comes into play. I will discuss in brief the facts of the case, the issues involved and the judgement and explain how the court ruled in favour of Katy Perry, citing fair use under Section 122(1)(b) and Section 58 of the Australian Trademark Act 1995 (hereinafter referred to as the act). Further, I will analyse the ambiguity in the court’s approach in determining the scope of fair use and how it could apply to global celebrity names used in local markets.
BRIEF FACTS AND SUMMARY OF JUDGEMENT
The Katy Perry vs. Katie Perry case is about a trademark dispute that arose between pop star Katy Perry (Katheryn Elizabeth Hudson) and the Australian fashion designer Katie Perry, also known as Katie Jane Taylor. Katie Perry, an Australian entrepreneur, started her clothing line under her birth name in 2007 and subsequently registered “Katie Perry” as a trademark for clothing in Australia in 2008. Meanwhile, Katy Perry proceeded to gain international acclaim and fame as a singer and used her popularity to sell merchandise, including clothing, bearing her stage name in Australia during her concerts. Katie Perry alleged that this merchandise infringed her trademark rights, claiming it caused consumer confusion and impacted her business. Katy Perry contended that her use of the name “KATY PERRY” was fair use, integral to identifying her as an artist, and not intended to infringe on the designer’s rights.
The case, heard by the Federal Court of Australia held in its decision in 2023 that Katy Perry and her entity, Kitty Purry Inc had indeed infringed the trademark of Ms Taylor’s name “KATIE PERRY” to use the popularity of Katy perry to promote and sell her clothing line around the time of her 2014 Australian tour.
The federal court further delved on the issue of whether use of trademark on a website Australia constitutes infringement under Section 120 of the act? When an overseas website accepts orders for goods that infringe on a trademark, it is considered that the website’s owners have intentionally used the trademark in Australia. This includes situations where confirmation emails and order pages related to the purchases involve the use of the disputed trademark in connection with these transactions within Australia. The court found that such actions, even if occurring outside the country, could still be classified as use within Australia.
Eventually the verdict given by the Federal court was overturned in an Appeal in November 2024. The court also confirmed that Katy Perry’s use of her name was in “good faith,” considering all the circumstances. It took into account that Katy Perry genuinely believed there was no likelihood of confusion. Her branded merchandise had been developed and sold internationally before she became aware of the Australian fashion designer’s trademark. Furthermore, there was no intention on the singer’s part to divert business from the local designer or exploit her trademark’s reputation.
CAN OWN NAME BE USED UNDER FAIR USE?
Yes, Trademark law under Fair use allows any person to use their own name in a commercial context without infringing a registered trademark if such use is deemed to be legitimate and not likely to create confusion or deceive consumers. The essential factors to determine whether the use qualifies as fair use includes the nature of the use, the likelihood of confusion between the names, and further determines the context in which the name is used. One should be allowed to use their own name in good faith, and so was the defence used by Katy Perry. Under the Australian Trademark Act section 122 (1)(b) Provides a defense for fair use when a trademark is used in good faith.
The defence of good faith under this section would make a case that Katy Perry used her name with the sole purpose to identify herself as the creator and performer behind the merchandise, rather than attempting to pass off her goods as being associated with the fashion designer Katie Perry. Katy Perry’s name had been a part of her public persona even before she became aware of the fashion designer’s trademark. The merchandise was developed and sold internationally, and there was absence of malafide intent to mislead consumers into believing that Katy Perry’s clothing was associated with the fashion line of Katie Perry. The court found that since the use of her name by Katy Perry was not intended to deceive or create confusion,it was consistent with the fair use provisions under Section 122(1)(b).
Therefore, Section 122(1)(b) of the Australian Trademark Act 1995 provided a basis to conclude that Katy Perry’s use of her name was not Trademark infringement of the fashion designer’s trademark, as it was made in good faith to promote her own goods (merchandise related to her music career) without an intent to deceive or divert business from the designer.
WHAT DOES IT MEAN IN THE CONTEXT OF INDIAN IP SCENARIO?
In India it has become a recent trend for celebrities to protect their names by registering it under Trademark act in order to protect their personalities however personality rights are not explicitly protected under Trademark Act, considering the importance of their brand value and goodwill courts have protected these rights under trademark act.
In the Anil Kapoor vs Simply Life India & Ors the court restricted the defendant from any unauthorized use of the actor’s voice, name, or any aspect of his persona. The Act provides for trademark of a personal name if it has acquired a distinctiveness or a secondary meaning and further the use of such trademark is allowed if it is done in good faith and in fair use, similar to the defence of good faith used in the Katy Perry case.
This case could play a guiding role in helping celebrities and trademark holders manage their brand identity to ensure no infringement takes place and any use of the trademark is done in good faith.
FINAL THOUGHTS
The court’s decision underscores the importance of distinguishing between commercial trademarks and personal brand, when the name in question is integral to an individual’s identity and professional reputation and persona, as in the case of Katy Perry. The fair use and good faith defense provisions under the Trade Marks Act 1995 (Australia) allowed the singer to use her name without infringing on the fashion designer’s trademark, emphasizing that good faith use of one’s name in the context of personal branding should not automatically be considered an act of infringement. This decision marks an important precedent for trademark cases that involve personal names, particularly in industries where individuals have built global brands tied to their identity.
Authored by: Ms. Garima Agarwal
Law Student at PES University
Leave a Reply