What’s in a name: Katy Perry and the Aussie designer [op-ed]

Katy Perry is getting very used to the court system.

The singer is currently appealing a July verdict that ordered she and her label pay $2.78 million for plagiarising a largely unknown Christian rap song on her 2013 hit ‘Dark Horse’.

This week, photo agency Backgrid sued her for $150,000, for uploading one of their photos to Instagram in 2016. The photo is of Perry dressed as Hillary Clinton for Halloween.

And now an Australian designer who trades under the name Katie Perry has launched litigation proceedings against her for trademark infringement.

So she is currently involved in legal battles over her music, her likeness, and her name. These are hard times for Katy Perry.

In late 2006, Sydney-based designer Katie Taylor started a fashion label using her maiden name, Katie Perry. She started off slowly, with a stall at Paddington Markets. In July 2008, the debut single from a pop star also named Katy Perry hit the Australian charts, going on to enjoy a six-week reign at #1. The day before the song finally dropped out of the Australian Top 10, Katie Taylor formally trademarked the name ‘Katie Perry’, which she had then been trading under for close to two years.

Unluckily for Taylor, Perry quickly became one of the biggest pop stars in the world. And in 2009, Katy became aware of Katie. Taylor claims Perry’s representatives “tried to bully me to give up my trademark by attempting to initiate opposition proceedings and threatening to sue me.”

Taylor couldn’t be scared off, and so Perry gave up and simply started selling her own line of Katy Perry clothing, “placing herself above the law in Australia.” This isn’t just concert merch we’re talking about here. Katy Perry clothing lines have been sold in Australian Target and Myer stores.

It’s worth pausing here to note that Katy Perry isn’t actually Katy Perry’s name. It’s Katy Hudson. In 2001, she released an unsuccessful Christian record under her birth name, before changing it in 2003 to avoid confusion with the actress Kate Hudson.

And now, ten years since the singer first threatened to sue the designer, the tables have turned and it’s Taylor bringing proceedings against Perry, calling the lawsuit a ‘“real David and Goliath fight.”

This type of thing happens all the time. The history of the music industry is littered with similar trademark claims. Most of them are straightforward and rarely get to court.

Brisbane band Cub Sport were originally named Cub Scouts, but after receiving a visit from a few woggle-wearing heavies (or maybe it was just a legal letter), they decided to change their name and avoid any complications.

As Jack White’s band The Raconteurs readied their album release in 2006, they discovered a Queensland band already held the rights to the name in this territory. A similar David and Goliath fight was sidestepped when the band decided to just call themselves The Saboteurs when releasing music and touring here. White released a statement to Australian media, explaining: “The Raconteurs name was already taken by a jazz band; to make things easier, and in the spirit of espionage and subversion, we have decided to become The Saboteurs in Australia only.” Of course, the record collector in White must have been delighted by this odd chain of events.

In 2013, Van Halen sued their drummer’s ex-wife Kelly Van Halen for using her own name for a range of design products. Under the name ‘Kelly Van Halen’, she sold swimsuits, children’s blankets, pillows, ponchos and more. Kelly had divorced Alex Van Halen in 1996, but kept her married name, as many people do (like Jack White, for example). The band claimed “an intentional violation of rights”, citing unfair competition with the band’s own merchandise which is laughable when you consider she was selling alpaca blankets and patchouli soaps. They settled out of court, under the proviso that Kelly never puts her name to anything considered a music product.

A similar delineation was made during a series of long-running legal disputes between Apple Computers and Apple Corps, a music company created by The Beatles in 1968 as a tax shelter. In 1978, Apple Corps filed a trademark infringement lawsuit against the new computing company, which was settled out of court three years later; Apple Computers paid $80,000 to continue using the name, with the clear agreement that they wouldn’t enter the music business.

Over the years, as Apple Computers added MIDI capabilities, audio recording programs, a chime sound effect and, most brazenly, the iTunes music store, new lawsuits were launched and the terms of trade between the two companies were adapted for the changing marketplace. And it is a 2006 lawsuit between the two Apples that might hold the legal defence that Perry’s team will lean upon.

Now, this will seem like I’m messing with you, but there is a legal test known as “a moron in a hurry.” It has been used in many prominent trademark infringement cases over the years, and could apply here.

The regrettable phrase was first uttered in the court of law by Justice Foster during a 1978 case between two newspaper publishers. A British Communist Party paper named The Morning Star filed an injunction to shut down a new tabloid named The Daily Star, claiming confusion would arise if the two were on the same newsstand. When throwing the case out, the judge explained his decision by saying, “If one puts the two papers side by side I for myself would find that the two papers are so different in every way that only a moron in a hurry would be misled.”

Another judge quoted the phrase in a lawsuit between Newsweek and BBC the same year, and a catchphrase was born. “A moron in a hurry” was used throughout the years to argue that two different items couldn’t reasonably be confused by a passer-by.

In 2007, Apple’s lawyers claimed that “even a moron in a hurry could not be mistaken about the difference between iTunes and the Apple record label”, nor about the differences between the Apple Corp Grammy Smith logo and the”cartoonish apple with a neat bite out of its side.”

The judge agreed, Apple Corps strict hold over the trademark was relaxed, and Apple Computers went on to completely control the music industry for a while there.

So, would this defence work in an Australian court? It has been used in Canada, the UK and the US. More importantly, would ‘a moron in a hurry’ mistake Katie Perry’s fashion line with the branded Katy Perry clothes? It’s hard to make the case that the Katy Perry Pyjama Set, with its Paddle Pop pants and singlet slathered in Perry’s likeness, would ever be mistaken for the elegant pieces in Taylor’s range.

In 2017, Kylie Minogue blocked Kylie Jenner from trademarking the name ‘Kylie’ for use for her beauty range, with her snipey legal papers calling Jenner “a secondary reality television personality” and Minogue an “internationally-renowned performing artist, humanitarian and breast cancer activist known to the world simply as Kylie.”

The US Patent Office agreed, which – if Australian courts follow similar logic – would see them side with Katy Perry.

It’s likely that Perry will simply try to settle out of court. But what will the terms be? Perry isn’t about to stop selling fashion items, and Taylor is very unlikely to change the name of her label. A local brand name, built over 13 years, is worth something. Soon we will see exactly what is in a name, and what that name is worth. And don’t even get me started on the spelling…