Katie Perry demands Katy Perry in Australia. Wait, what?

One is an international pop star that has just gone to space. The other is a clothing designer. A court in Australia will decide which of the two has the right to claim its name.

Katie Perry, an Australian designer with a homonymous fashion brand, has held for years that Katheryn Hudson – the international superstar known in almost everyone like Katy Perry – has infringed its registered trademark.

His case has gone through the Australian courts for more than five years, with varied results. The designer won in 2023, but an Appeals Court reversed that ruling last year, looking to set the dispute.

Now, the Superior Court of Australia – the highest judicial instance in the country – is reexamining the conflict, which suggests that the Court of Appeals could have based on a erroneous assumption about the fame that could put Australian brands at risk.

“This is the story of two women, two teenage dreams and one name,” said an Australian judge in 2023. But the case has broader implications and poses questions about the reputation and the multiple ways in which celebrities generate income.

The conflict between the two Perrys emerged for the first time around 2009, a year after the American singer launched her successful debut simple, “I kissed to Girl.” The star representatives say they tried to reach an agreement with the designer on the use of their similar names, but that she refused. She argues that she never received any offer.

Katie Perry, the designer, says she launched her brand in 2006, began working on it full in 2007, requested one of her brands registered in 2008 and enrolled in 2009. All that, she says, happened before the singer reached great fame in Australia.

A decade later, he sued Katy Perry, claiming that clothes sales during one of the tours of the singer through Australia violated her registered trademark.

The designer initially won. A judge ruled that the US celebrity had no reputation in the field of fashion when the Australian requested the registered trademark. That meant that the singer did not have a superior right over her artistic name in relation to clothing sales, and the judge concluded that some articles sold on her Australian tour yes infringed the designer’s mark.

But last year, an appeals court annulled that decision. And, in an unexpected turn, it went further: the judges also said that the registered trademark of Katie Perry should never have been granted, and ordered their cancellation.

According to them, the pop star already had a reputation when the designer requested her brand, which made the celebrity expand to the world of merchandising and that the Australian brand could confuse consumers.

When deciding to reopen the case, the Superior Court expressed concern that the judgment of the Court of Appeals, although apparently harmless, could actually have established a worrying precedent.

What follows from the logic of the Court of Appeals “is much more significant than it seems to have understood,” Jayne Jagot Jagot said at an audience last week, shortly before her and her colleagues agreed to review the appeal of the designer, something that, according to experts, they do in just 10% of the cases presented.

The judges questioned the reasoning of the Court of Appeals, suggesting that it had been based on a problematic premise: that famous artists inevitably expand their marks. They reflected on how broad this criterion could be and if that logic also required the ability to foresee the future.

“If one is famous enough, the ability to monetize extends in all types of addresses, not only in clothes: also in whiskey, wine, makeup,” said Judge Jagot. “It becomes difficult to imagine a commercial activity that would not be covered.” He added that a celebrity could even expand to medical or dental services, such as “Katy Perry Invisalign, or whatever.”

Judge Simon Steward agreed, and said that there was also an implicit assumption that the star of the star would continue to succeed, expand and generate income indefinitely, something difficult to foresee. “How could it be known then that it would remain successful?” He asked the celebrity representative, Matthew Darke.

Darke insisted – one and again – that there was no legal issue with broader consequences. He denied that the Court of Appeals had made mistakes. “It was perfectly appropriate for the Court to reason as it did, and there is no mistake,” he said.

The judges were not convinced and called a new round in this long dispute.

In its deliberations, the Superior Court will have to decide exactly why it was famous Katy Perry around 2008 and if it mattered that it had or not reputation in the field of fashion, or if it was simply known. The decision will determine how similar cases are litigated and resolved.

And yes, similar cases exist.

For example, Burger King operates in Australia as Hungry Jack’s because another restaurant already possessed the rights of the name Burger King when the franchise arrived in the country.

Gregory Pieris, an intellectual property partner in K & L Gates in Melbourne, Australia, said there are “many cases” in which someone in Australia tries to register a brand identical to that of an international brand. What happens next between Katy Perry and Katie Perry will shape future cases like this, said Pieris.