Taylor v Killer Queen, LLC (No 5)
[2023] FCA 364
•21 April 2023
FEDERAL COURT OF AUSTRALIA
Taylor v Killer Queen, LLC (No 5) [2023] FCA 364
File number: NSD 1774 of 2019 Judgment of: MARKOVIC J Date of judgment: 21 April 2023 Catchwords: TRADE MARKS – infringement claim pursuant to s 120 of the Trade Marks Act 1995 (Cth) – whether respondents are liable as joint tortfeasors in breach of s 120 of the Act – whether certain types of merchandise sold in Australia are clothes or goods of the same description as clothes – defence under the proviso in s 120(2) of the Act – whether any use of the infringing mark in relation to goods of the same description as clothes is unlikely to deceive or cause confusion – defence under s 122(1)(a) of the Act – whether the second respondent is entitled to use of the “own name” defence – whether use of the infringing mark was in good faith – defence under s 122(1)(fa) of the Act – whether respondents would obtain registration of the infringing mark for clothes if they were to apply for it – whether alleged joint tortfeasors are entitled to benefit of defences under s 122(1)(a) – claim under 88(1)(a) of the Act to rectify the Register of Trade Marks by cancelling the applicant’s mark – whether grounds in s 88(2)(a) of the Act, relying on ss 60, 42 and 43 of the Act, are established – whether ground in s 88(2)(c) of the Act is established – reputation of the infringing mark prior to the priority date of the applicant’s mark – whether use of the applicant’s mark in relation to clothes is contrary to law – whether the applicant’s mark is likely to deceive or cause confusion – whether the relief sought should be limited by reason of laches, acquiescence and delay – claim for additional damages
PRACTICE AND PROCEDURE – application for suppression order – whether order necessary to prevent prejudice to proper administration of justice – consideration of appropriate duration of order
Legislation: Competition and Consumer Act (Cth), Sch 2 (‘Australian Consumer Law’)
Evidence Act 1995 (Cth)
Federal Court of Australia Act 1976 (Cth)
Trade Marks Act 1955 (Cth) (repealed)
Trade Marks Act 1955-1958 (Cth) (repealed)
Trade Marks Act 1995 (Cth)
Trade Practices Act 1974 (Cth)
Federal Court Rules 2011 (Cth)
Trade Marks Regulations 1995 (Cth)
Trade Marks Act 1938 (UK)
Cases cited: Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd (2017) 345 ALR 205; (2017) 124 IPR 264; [2017] FCAFC 56
Anheuser-Busch Inc v Budejovický Budvar, Národní Podnik (2002) 56 IPR 182; [2002] FCA 390
Apotex Pty Ltd v Les Laboratoires Servier (No 2) (2012) 293 ALR 272; [2012] FCA 748
Australian Co-operative Foods Ltd v Norco Co-operative Ltd (1999) 46 NSWLR 267
Australian Olympic Committee Inc v Big Fights Inc (1999) 46 IPR 53; [1999] FCA 1042
Bauer Consumer Media Ltd v Evergreen Television Pty Ltd (2019) 142 IPR 1; [2019] FCAFC 71
Baume & Co Ltd v A H Moore Ltd [1958] 1 Ch 907
BP PLC (formerly known as BP Amoco PLC) v Woolworths Ltd (2004) 62 IPR 545; [2004] FCA 1362
Broadway Plaza Investments Pty Ltd v Broadway Pty Ltd in the matter of Combined Projects (Arncliffe) Pty Ltd [2020] NSWSC 1778
Christian v Société des Produits Nestlé SA (No 2) (2015) 115 IPR 421; [2015] FCAFC 153
Christodoulou v Disney Enterprises Inc (2005) 156 FCR 344
Colbeam Palmer Ltd v Stock Affiliates Pty Ltd (1968) 122 CLR 25
Crawley v Short (2009) 262 ALR 654; [2009] NSWCA 410
Delfi Chocolate Manufacturing S.A. v Mars Australia Pty Ltd (2015) 115 IPR 82; [2015] FCA 1065
Dunlop Aircraft Tyres Ltd v Goodyear Tire & Rubber Company (2018) 262 FCR 76
E & J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144
Estex Clothing Manufacturers Pty Ltd v Ellis & Goldstein Ltd (1967) 116 CLR 254
Flexopack SA Plastics Industry v Flexopack Australia Pty Ltd (2016) 118 IPR 239; [2016] FCA 235
Fuchs Lubricants (Australasia) Pty Ltd v Quaker Chemical (Australasia) Pty Ltd (2021) 284 FCR 174
Futuretronics.com.au Pty Ltd v Graphix Labels Pty Ltd (No 2) (2008) 76 IPR 763; [2008] FCA 746
GAIN Capital UK Ltd v Citigroup Inc (No 4) (2017) 123 IPR 234; [2017] FCA 519
Goodman Fielder Pte Ltd v Conga Foods Pty Ltd (2020) 158 IPR 9; [2020] FCA 1808
Harcourts WA Pty Ltd v Roy Weston Nominees Pty Limited (No 5) (2016) 119 IPR 449; [2016] FCA 983
Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc (2020) 385 ALR 514; [2020] FCAFC 235
Henley Arch Pty Ltd v Henley Constructions Pty Ltd (2021) 163 IPR 1; [2021] FCA 1369
Jenkings v Northern Territory of Australia (No 4) [2021] FCA 839
Jones v Dunkel (1959) 101 CLR 298
JR Consulting & Drafting Pty Ltd v Cummings (2016) 329 ALR 625; [2016] FCAFC 20
Knott Investments Pty Ltd v Winnebago Industries Inc (2013) 211 FCR 449
LED Builder Pty Ltd v Masterton Homes (NSW) Pty Ltd (1994) 54 FCR 196
Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354; [2009] FCA 606
Masterton Homes Pty Ltd v LED Builders Pty Ltd (1996) 33 IPR 417; (1996) 12 BCL 408
McCormick & Co Inc v McCormick (2000) 51 IPR 102; [2000] FCA 1335
McCorquodale v Masterson (2001) 63 IPR 582; [2004] FCA 1247
Minister for Immigration, Citizenship, Migrant Services and Multicultural Affairs v FAK19 [2021] FCAFC 153
Mondi Textile GmbH v Pam Corporation (2000) AIPC 91-607
Monster Energy Co v Darma (2017) 128 IPR 54; [2017] ATMO 4
Monster Energy Company v Mixi Inc (2020) 156 IPR 378; [2020] FCA 1398
Mossimo Inc v Bozzini Pty Ltd (2001) AIPC 91-663
Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (No 2) [2018] FCA 17
Musidor BV v Tansing (t/as Apple Music House) (1994) 52 FCR 363
Nikken Wellness Pty Ltd v van Voorst [2003] FCA 816
Orr v Ford (1989) 167 CLR 316
Oxworks Trading Pty Ltd v Gram Engineering Pty Ltd (2019) 154 IPR 215; [2019] FCAFC 240
PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (2021) 285 FCR 598
Pfizer Products Inc v Karam (2006) 219 FCR 585
Playgro Pty Ltd v Playgo Art & Craft Manufactory Ltd (2016) 117 IPR 489; [2016] FCA 280
Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365
Rodney Jane Racing Pty Ltd v Monster Energy Company (2019) 142 IPR 275; [2019] FCA 923
Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8
Seltsam Pty Ltd v McGuiness; James Hardie & Coy Pty Ltd v McGuinness (2000) 49 NSWLR 262
Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd [2019] FCA 719
Singtel Optus Pty Ltd v Optum Inc (2018) 140 IPR 1; [2018] FCA 575
Smith & Nephew Plastics (Australia) Pty Ltd v Sweetheart Holding Corporation (1987) 8 IPR 285; (1987) AIPC 90-411
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592
Southern Cross Refrigerating Company v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592
SZTAL v Minister for Immigration and Border Protection (2017) 262 CLR 362
Taylor v Killer Queen LLC [2020] FCA 444
Taylor v Killer Queen, LLC (No 2) [2021] FCA 680
The Hoyts Corp Pty Ltd v Hoyt Food Manufacturing Industries Pty Ltd (2003) 61 IPR 334; [2003] ATMO 61
Trident Seafoods Corporation v Trident Foods Pty Ltd (2018) 137 IPR 65; [2018] FCA 1490
Truong Giang Corporations v Quach (2015) 114 IPR 498; [2015] FCA 1097
Ward Group Pty Ltd v Brodie & Stone plc (2005) 143 FCR 479
Winton Shire Council v Lomas (2002) 119 FCR 416
Woolworths Ltd v BP PLC (No 2) (2006) 154 FCR 97
Division: General Division Registry: New South Wales National Practice Area: Intellectual Property Sub-area: Trade Marks Number of paragraphs: 879 Date of hearing: 29 – 30 November 2021; 1 – 3 December 2021; 16 – 17 February 2022 Counsel for the Applicant: Mr C Dimitriadis SC and Mr R Clark Solicitor for the Applicant: Silberstein & Associates Counsel for the Respondents: Mr MJ Darke SC and Ms E Bathurst Solicitor for the Respondents: Corrs Chambers Westgarth ORDERS
NSD 1774 of 2019 BETWEEN: KATIE JANE TAYLOR
Applicant
AND: KILLER QUEEN, LLC
First Respondent
KATHERYN ELIZABETH HUDSON
Second Respondent
KITTY PURRY, INC (and another named in the Schedule)
Third Respondent
AND BETWEEN: KILLER QUEEN, LLC (and another named in the Schedule)
First Cross-Claimant
AND: KATIE JANE TAYLOR
Cross-Respondent
ORDER MADE BY:
MARKOVIC J
DATE OF ORDER:
21 APRIL 2023
THE COURT ORDERS THAT:
1.The parties are to confer and within 14 days of the making of these Orders provide to the Associate to Markovic J proposed orders giving effect to these reasons.
2.Insofar as the parties are unable to agree to the terms of the proposed orders referred to in Order 1 above, including the appropriate order as to costs, the areas of disagreement should be set out in mark up in the draft to be provided.
3.Pursuant to s 37AF and s 37AG(1)(a) of the Federal Court of Australia Act 1976 (Cth), and on the ground that it is necessary to prevent prejudice to the proper administration of justice, the documents listed in Schedule 1 to these Orders are to be treated as confidential and are not to be disclosed to any person other than the parties to this proceeding, their legal representatives and to the Court for the purpose of this proceeding.
4.Order 3 above is to remain in place:
(a)in relation to the document at item 6 of Schedule 1 until 31 December 2023; and
(b)in relation to the balance of the documents itemised in Schedule 1 until 31 December 2026.
5.The proceeding be listed for case management hearing on 10 May 2023 at 9.30 am AEST.
6.The text of the reasons for judgment published today is to be published and disclosed only to the parties and their legal advisors.
7.By 4.00 pm AEST on 26 April 2023 the parties are to inform the Associate to Markovic J whether:
(a)the proposed redactions (shown in yellow highlight) to paragraphs [478], [533] and [536] of the reasons published in accordance with Order 6 above are to be maintained having regard to Orders 3 and 4 above; and
(b)they propose any further redactions as a result of Orders 3 and 4 above.
THE COURT NOTES THAT:
8.The reasons for judgment will be published on 27 April 2023 at midday AEST and any redactions made in the reasons are made in accordance with Orders 3 and 4 above.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
Schedule 1
#
Document
Category
1
Agreement between Killer Queen LLC and Purrfect Ventures LLC dated 16 September 2016
1
2
Agreement between Purrfect Ventures LLC and GBG USA Inc dated 16 September 2016
1
3
Agreement between DMG and Second Respondent dated 22 October 2004
1
4
GBG e-commerce and URL rights acknowledgement, confirmation and consent letter dated 1 December 2017
1
5
Email between Epic Rights and DMG dated 10 March 2020
1
6
List of Katy Perry branded merchandise in Australia by Epic Rights
2
7
Confidential Exhibit SJ-6 – Membership Interest Purchase Agreement between GBG USA Inc and Hudson Fund, LLC
1
8
List of goods (Excel version included in electronic court book)
3
9
List of goods – additional goods
3
10
Agreement between Bravado International Group Merchandising Services, Inc. and H&M Hennes & Mauritz GBC AB
1
11
Operating Agreement of Purrfect Ventures LLC
1
12
Agreement between UMG Commercial Services, Inc dba Universal Music Group Brands and Killer Queen, LLC
1
TABLE OF CONTENTS
1 The facts
[8]
1.1 Ms Taylor – background and early career
[12]
1.2 Ms Hudson – background and early career
[20]
1.3 Killer Queen, Kitty Purry and Purrfect Ventures
[37]
1.4 Ms Taylor starts her own fashion label
[40]
1.5 Ms Taylor makes her first application for registration of a trade mark
[52]
1.6 Launching the Katie Perry label – October to November 2007
[55]
1.7 Ms Taylor establishes a production chain
[58]
1.8 Ms Hudson – 2007 to 2008
[60]
1.9 The development of KATY PERRY merchandise
[83]
1.9.1 Launch of the Katy Perry webstore
[95]
1.9.2 Initial arrangements with Bravado
[99]
1.10 Ms Hudson’s promotional tour – 2008
[101]
1.11 Filing of the application for registration of the Applicant’s Mark
[104]
1.12 The KATIE PERRY fashion label - 2008 to 2009
[110]
1.13 Ms Taylor first hears about Ms Hudson
[127]
1.14 Mr Jensen becomes aware of Ms Taylor’s application for the Applicant’s Mark
[129]
1.15 Correspondence between Ms Hudson and Ms Taylor
[130]
1.16 Events leading up to registration of the Applicant’s Mark
[134]
1.17 Registration of the Applicant’s Mark and Ms Taylor’s continued business operations
[184]
1.18 The progress of Ms Hudson’s TM Application
[194]
1.19 Ms Taylor and the KATIE PERRY label – 2010 to 2011
[199]
1.20 Ms Hudson’s career – 2009 to 2011
[201]
1.20.1 2009
[201]
1.20.2 2010
[203]
1.20.3 2011
[204]
1.21 Ms Taylor – 2012 to 2020
[209]
1.22 Ms Hudson – 2012 to 2020
[221]
1.22.1 2012
[221]
1.22.2 2013
[222]
1.22.3 2014-2015
[223]
1.22.4 2016
[230]
1.22.5 2017-2018
[235]
1.22.6 2019-2020
[244]
1.22.7 2021
[255]
1.23 Ms Taylor’s decision to commence this proceeding
[258]
2 The infringement claim
[267]
2.1 The pleaded case
[267]
2.2 Legislative framework
[270]
2.3 Legal principles
[274]
2.3.1 Use of a trade mark on a website
[283]
2.3.2 Joint tortfeasors
[285]
2.4 Clothes or goods of the same description as clothes
[288]
2.5 Ms Beale’s evidence
[292]
2.6 Mr Bush’s evidence
[295]
2.6.1 Clothes and footwear
[299]
2.6.2 The balance of the Disputed Categories
[309]
2.7 Clothes
[310]
2.7.1 Legal principles
[312]
2.7.2 Consideration
[318]
2.8 Goods of the same description as clothes
[348]
2.8.1 Footwear
[352]
2.8.2 Headwear or hats
[360]
2.8.3 Decorative masks and headgear
[364]
2.8.4 Novelty jewellery, wristbands, bracelets and necklaces
[365]
2.8.5 Handbags and purses, bags and backpacks
[371]
2.9 The Disputed Categories — conclusion
[376]
2.10 Ms Taylor’s claims of infringement
[378]
2.10.1 First channel – Ms Hudson’s concerts
[379]
2.10.1.1 The Prismatic Tour
[381]
2.10.1.1.1 The parties’ submissions
[382]
2.10.1.1.2 Consideration
[388]
2.10.1.2 The Witness Tour
[415]
2.10.1.2.1 The parties’ submissions
[416]
2.10.1.2.2 Consideration
[421]
2.10.2 Second channel – Pop-up stores
[436]
2.10.2.1 The parties’ submissions
[438]
2.10.2.2 Consideration
[442]
2.10.3 Third channel – Target
[450]
2.10.3.1 The parties’ submissions
[452]
2.10.3.2 Consideration
[457]
2.10.4 Fourth channel – Myer
[464]
2.10.4.1 The parties’ submissions
[466]
2.10.4.2 Consideration
[474]
2.10.5 Fifth channel – Bravado sales through other outlets
[481]
2.10.5.1 The parties’ submissions
[482]
2.10.5.2 Consideration
[487]
2.10.6 Sixth channel – websites
[508]
2.10.6.1 Bravado Website
[512]
2.10.6.2 katyperry.shop.musictoday.com/store
[518]
2.10.6.3 Epic Rights webstores
[525]
2.10.6.4 katyperrycollections.com and the Amazon Website
[540]
2.10.7 Seventh channel – other websites
[548]
2.10.7.1 shopstyle.com.au, gilt.com and amazon.com
[555]
2.10.7.1.1 gilt.com
[556]
2.10.7.1.2 shopstyle.com.au
[562]
2.10.7.1.3 amazon.com
[563]
2.10.7.1.4
[565]
2.10.7.2 ebay.com.au
[569]
2.10.7.3 Has there been direct infringement by Purrfect Ventures and/or Ms Hudson? Are Killer Queen and Purrfect ventures joint tortfeasors?
[573]
2.10.8 Eighth channel – Cotton On
[578]
2.10.9 Conclusion on Ms Taylor’s claims of infringement
[583]
2.11 Defences
[585]
2.11.1 The proviso in s 120(2) of the TM Act
[585]
2.11.1.1 Legal principles
[589]
2.11.1.2 The parties’ submissions
[592]
2.11.1.3 Consideration
[595]
2.11.2 Section 122(1)(a) of the TM Act – use of own name in good faith
[599]
2.11.2.1 Who has the benefit of the defence in s 122(1)(a) of the TM Act?
[600]
2.11.2.2 Section 122(1)(a) of the TM Act and Ms Hudson
[633]
2.11.2.2.1 “The person’s name”
[635]
2.11.2.2.2 Use in good faith
[646]
2.11.3 Section 122(1)(fa) of the TM Act – would the respondents obtain registration of the Katy Perry Mark for clothes?
[669]
2.11.3.1 The parties’ submissions
[671]
2.11.3.2 Consideration
[684]
2.11.4 Conclusion on availability of defences
[705]
3 The cross-claim
[706]
3.1 Legislative framework
[707]
3.2 Section 88(2)(a) of the TM Act
[710]
3.2.1 Opposition under s 60 of the TM Act
[711]
3.2.1.1 Legal principles
[712]
3.2.1.2 Had the Katy Perry Mark acquired a reputation in Australia before the Priority Date?
[714]
3.2.1.3 Is the use of the Applicant’s Mark likely to deceive or cause confusion?
[729]
3.2.1.3.1 Legal principles
[730]
3.2.1.3.2 The parties’ submissions
[732]
3.2.1.3.3 Consideration
[740]
3.2.1.3.4 Conclusion
[753]
3.2.2 Opposition under s 42 TM Act
[754]
3.2.3 Opposition under s 43 TM Act
[759]
3.2.3.1 Legal principles
[760]
3.2.3.2 The parties’ submissions
[766]
3.2.3.3 Consideration
[770]
3.3 Section 88(2)(c) of the TM Act
[774]
3.3.1 Legal principles
[775]
3.3.2 The parties’ submissions
[777]
3.3.3 Consideration
[783]
3.4 Conclusion – s 88 of the TM Act
[796]
4 Relief
[798]
4.1 Is Ms Taylor entitled to injunctive relief?
[802]
4.1.1 Laches
[814]
4.1.2 Acquiescence
[827]
4.1.3 Conclusion
[833]
4.2 Is Ms Taylor entitled to additional damages?
[834]
5 The respondents’ application for non-publication orders
[852]
5.1 Statutory framework and applicable principles
[853]
5.2 Category 1 – current commercial agreements and documents
[857]
5.3 Category 2 – merchandise sales sheets and figures
[862]
5.4 Category 3 – confidential lists of documents
[869]
6 Disposition
[874]
REASONS FOR JUDGMENT
MARKOVIC J:
This is a tale of two women, two teenage dreams and one name.
The applicant, Katie Jane Taylor, is a fashion designer. She is the registered owner of Australian trade mark no. 1264761 for the word KATIE PERRY (Applicant’s Mark) which is registered in class 25 for “clothes” (Registered Goods) with a priority date of 29 September 2008 (Priority Date). Ms Taylor has designed and sold clothes under the brand name “KATIE PERRY” since about 2007.
The second respondent, Katheryn Hudson, is a music artist and performer. In 2002 she adopted the name Katy Perry for the purposes of her professional music career and associated commercial merchandise licensing activities and, since that time, she has used that name for those purposes. I will refer to Katy Perry in these reasons as Ms Hudson. The first, third and fourth respondents to the proceeding are respectively Killer Queen, LLC, Kitty Purry, Inc and Purrfect Ventures LLC. As explained below, they are companies associated with Ms Hudson.
How Ms Taylor and Ms Hudson each came to be known by, and to use, the same name in their respective commercial activities, albeit with different spelling, is set out below. Suffice to say it is that fact that has led to this proceeding.
In summary, Ms Taylor alleges that the respondents have imported for sale, distributed, advertised, promoted, marketed, offered for sale, supplied, sold and/or manufactured in Australia, or to people in Australia, the Registered Goods bearing the word mark KATY PERRY and the other marks set out at [7] of her further amended statement of claim (FASOC) (see [267] below) (collectively, Katy Perry Mark) and further, or in the alternative, that the respondents have participated in a common design with certain retailers to carry out those acts. Ms Taylor alleges that by that conduct the respondents have infringed the Applicant’s Mark pursuant to s 120 of the Trade Marks Act 1995 (Cth) (TM Act) or are liable as joint tortfeasors in the direct infringement of either some of the respondents or relevant third parties.
The respondents have filed a cross-claim seeking cancellation of the Applicant’s Mark pursuant to s 88(1)(a) of the TM Act on the grounds set out in s 88(2)(a), relying on ss 60, 42 and 43, and s 88(2)(c) of the TM Act.
On 7 April 2020 I made an order pursuant to r 30.01 of the Federal Court Rules 2011 (Cth) that all issues of liability, entitlement to additional damages for alleged trade mark infringement and all claims for declaratory and injunctive relief be heard and determined separately from, and prior to, all other issues and claims in the proceeding: see Taylor v Killer Queen LLC [2020] FCA 444. These reasons address those issues.
1. The facts
Putting aside the experts called by the parties in relation to the question of whether particular items of apparel are clothes or goods of the same description as clothes (see [288]-[376] below), there were only two witnesses.
Ms Taylor relied on her own evidence and the respondents relied on evidence given by Steven Jensen, a partner of Direct Management Group Inc (DMG), a talent management agency which has managed, and continues to manage, Ms Hudson’s career. Ms Hudson did not give evidence. Ms Taylor’s and Mr Jensen’s evidence, which respectively chronicles Ms Taylor’s and Ms Hudson’s careers and the development of their “brands”, insofar as it is relevant, is set out below. Both Ms Taylor and Mr Jensen were extensively cross-examined.
The respondents submitted that Ms Taylor was not a truthful witness and that the Court should not rely on her evidence except where it is against her interests or independently corroborated by documents in evidence. They set out aspects of Ms Taylor’s evidence which they submitted demonstrated her dishonesty. Those aspects principally concern events which took place in 2009 and I address them, where relevant, below including by making findings as to whether her evidence is accepted. However, I am not prepared to reject all of Ms Taylor’s evidence, except where it is against her interests or corroborated by documents in evidence, as urged by the respondents.
The events which led to this proceeding commenced many years ago. Ms Taylor did her best to recall them and, given that a significant period of time has passed since some of the relevant events took place, I accept that she may have been confused in some aspects of her recollection. As a general observation, my impression of Ms Taylor was that she was somewhat naïve, prone to a level of exaggeration and opportunistic. It became clear on a number of occasions that Ms Taylor attempted to fashion her evidence in a manner that she believed would best assist her case, rather than giving full and frank evidence to the Court. On other occasions, she was evasive in responding to questions put to her in cross-examination. On yet other occasions Ms Taylor gave answers to questions that could not be accepted, particularly in the face of other contemporaneous material. Although this approach by Ms Taylor to her evidence served to undermine my overall impression of her as a witness, it has not led me to reject the whole of her evidence.
1.1 Ms Taylor – background and early career
Ms Taylor was born Katie Jane Perry. Her biological father is Brian Perry and her mother is Suzanne Mary Skillen. Ms Taylor’s parents separated when she was 18 months old and her biological father did not play a large role in the early part of her life. Thus while growing up Ms Taylor adopted her step-father’s last name, Howell, and for much of her life she was referred to as Katie Howell, although she never formally changed her legal name to Howell.
Ms Taylor had a falling out with her step-father and, in the early 2000’s, “reached out” to her biological father and sought to have a relationship with him. Ms Taylor’s evidence was that, as a result, since about 2006 she has referred to herself as “Katie Perry”. Despite that evidence, in cross-examination, a number of matters became apparent.
First, Mr Taylor only referred to herself as Katie Perry socially, that is, among her friends, and for example, when making restaurant bookings, but remained as Katie Howell in legal documents. According to Ms Taylor at that time and at least until 2008, when she first became aware of Ms Hudson (see [127] below), she went by two names.
Secondly, at the time she left her job at David Jones in 2007 (see [49] below), Ms Taylor was still known to her work colleagues as Katie Howell, despite having decided in 2006 to refer to herself as Katie Perry. Ms Taylor explained that when she first took on the role at David Jones she was Katie Howell and that it “would have been weird” for her staff if she suddenly changed names so she remained as Katie Howell while at David Jones.
Thirdly, there was evidence that Ms Taylor continued to use the name Katie Howell beyond 2006 including in relation to services acquired and documents relating to her fashion business. Ms Taylor said that this was either because the documents were legal documents or because she went by both names, “Katie Howell” and “Katie Perry”.
In March 2015, following her marriage to Matthew Taylor, Ms Taylor changed her legal name to “Katie Jane Taylor”.
Ms Taylor wanted to be a fashion designer since she was 11 years old. She studied at the Fashion Business Institute and in 2003 she completed a Fashion Industry Certificate IV.
Ms Taylor has always worked in retail and fashion and, until she started her own fashion label, had the following roles:
·sales assistant at Browns, South Molton Street, London (1999);
·assistant store manager at Jag, Warringah, New South Wales (NSW) (2000);
·buyer and store manager at Activate Pro Shop, Bondi, St Leonards, Mosman and Parramatta, NSW (2001-2002);
·store manager at Oroton, Paddington and Centre Point, NSW (2003-2005); and
·menswear sales manager working in executive menswear and with buyers’ agents in order to determine what menswear to stock at David Jones in Chatswood and Warringah, NSW (2005-2007).
1.2 Ms Hudson – background and early career
As set out above, the principal witness for the respondents was Mr Jensen, a partner of DMG which has its principal place of business in Los Angeles, California, United States of America (US or USA). Mr Jensen founded DMG with his partner, Martin Kirkup, in April 1985. A third partner, Bradford Cobb, joined DMG in 1998.
DMG manages artists’ careers or other talents with a view to assisting in achievement of their commercial and career goals. Other managers, agents and firms are responsible for other aspects of support and services required by the artists or talents including creative, processing engagements and work for which they are booked, marketing and sales, publicity, accounting, legal and tax services and so on. DMG works closely with the other managers, agents and firms providing services in carrying out its role.
Mr Jensen was introduced to Ms Hudson in 2004 by his business partner, Mr Cobb. At the time she was introduced as Katy Perry. Prior to meeting Ms Hudson Mr Jensen understood, from research he had undertaken in relation to her early career as well as publicity he had read, that Ms Hudson had adopted the name “Katy Perry” as her professional or stage name in about 2002.
Since July 2004, when Ms Hudson was about 19 years old, DMG has acted exclusively as her talent manager. Since that time, Mr Jensen, together with Messrs Kirkup and Cobb, has taken various steps to plan for and implement the development of Ms Hudson’s career as a successful music artist including engaging other relevant service providers as required, securing commercial opportunities for her, carrying out various actions and providing advice. Mr Jensen explained that each of his and Messrs Kirkup and Cobb’s respective roles overlap in that they each know what the others are doing but that, in terms of responsibilities, Mr Kirkup is concerned with marketing and record label interaction, Mr Cobb oversees the music aspect of Ms Hudson’s career and he is involved in Ms Hudson’s brand affiliations, real estate purchases and touring.
In undertaking his role as talent manager Mr Jensen has kept in regular and frequent contact with Ms Hudson, by calls and meetings, to discuss strategy for managing her career and to keep her informed of the actions DMG is taking. He also texts Ms Hudson regularly.
Ms Hudson has been active as a music artist since at least 2000. As a teenager she performed gospel music and in 2001 she entered into a music recording contract with Red Hill Records, the “youth” division of a Christian entertainment company, Pamplin. Pamplin ceased to operate and Red Hill Records closed in December 2001.
Mr Jensen understands, given his role as Ms Hudson’s talent manager, that during 2001 Ms Hudson released an album titled “Katy Hudson” which included the single “Trust in Me” which placed at number 17 on the Radio & Records Christian Rock Chart.
From September to November 2001 Ms Hudson toured the US and performed as an opening act on the Christian music artist Phil Joel’s tour, “The Strangely Normal Tour”.
In 2002 Ms Hudson moved to Los Angeles and adopted her stage name “Katy Perry”. This is a combination of the shortened form of her first name, Katheryn, and her mother’s maiden name, Perry, and was adopted to avoid confusion between her and the actress Kate Hudson.
Prior to DMG commencing as Ms Hudson’s manager in 2004 the recording label Java, affiliated with The Island Def Jam Music Group and music producer Glen Ballard, was Ms Hudson’s record company for a short period. During that time although Ms Hudson recorded music, it was not released as an album.
In 2004 Ms Hudson provided the background vocals for the song “Old Habits Die Hard” by Mick Jagger of the Rolling Stones which was featured as track one on the album “Alfie”. The album won the 2005 Golden Globe Award for best original song at the 62nd Annual Golden Globe Awards.
From the time that DMG started to represent Ms Hudson there was substantial activity associated with the planning and development of her career, including writing and production of music and seeking performing and recording opportunities. Mr Jensen was closely involved in those activities. At that time Colombia Records was already in place as Ms Hudson’s record company and work was proceeding on an album with Ms Hudson as one of two lead singers with the band “Matrix” although, the album was never released. The relationship with Colombia Records came to an end because of creative differences, including over Ms Hudson’s ambition for a career as a solo performing artist.
In October 2004 Ms Hudson was featured in an article titled “The Next Big Thing” in Blender magazine, a US music industry publication.
On 24 May 2005 Ms Hudson’s unreleased single “Simple” featured as track 11 on the soundtrack to the “Sisterhood of the Traveling Pants” released by Colombia Records. In 2005 Ms Hudson released a music video for “Simple”. The video currently has over five million views on a fan account on YouTube uploaded in 2007.
The “Sisterhood of the Traveling Pants” movie was released in Australia on 23 June 2005. It ranked as number eight on its opening and in its second weekend in cinemas. According to a website “Box Office Mojo”, which Mr Jensen described as an Amazon-owned box office revenue tracking website, the movie grossed just over US $1.3 million in Australia.
In November 2005 Ms Hudson collaborated with Payable On Death (P.O.D.), an American Christian “nu metal” band on its single titled “Goodbye for Now” and was featured in the music video for the song. In January 2006 the band, together with Ms Hudson, performed the single on “The Tonight Show with Jay Leno”.
Ms Hudson featured in a music video for the single “Cupid’s Chokehold” by US rock band “Gym Class Heroes” which was released on 28 November 2006.
1.3 Killer Queen, Kitty Purry and Purrfect Ventures
Killer Queen was incorporated on 27 August 2009 in California with Ms Hudson as its sole shareholder and officer. On 16 December 2011 Ms Hudson and Killer Queen entered into a deed of assignment pursuant to the terms of which Ms Hudson assigned to Killer Queen all of her “rights, titles and interests in and to” the trade marks and service marks and the federal registration and US and international registrations and applications listed in schedule A to the deed.
Kitty Purry was incorporated on 23 April 2008 in California. In its statement of information filed in 2016 it describes its business as “Entertainment – Music Touring”. Ms Hudson is the sole director, chief executive officer, secretary, chief financial officer and shareholder of Kitty Purry.
Purrfect Ventures was incorporated on 7 September 2016 in Delaware. Its initial members were Killer Queen and GBG USA Inc. As described at [234] below, in 2021 Hudson Fund, LLC, a company incorporated in 2016 with Ms Hudson as its sole member, acquired GBG’s shares in Purrfect Ventures.
1.4 Ms Taylor starts her own fashion label
In 2007, after leaving her role at David Jones, Ms Taylor started her own fashion label, a decision which was inspired by her travels in Italy the preceding year.
From the outset Ms Taylor had a clear vision of what she wanted her label to be; she wanted to design luxurious loungewear. She was aware, from working in retail and her experience buying clothes, that there was a niche market at the time for this type of garment. Ms Taylor described loungewear as “garments which are comfortable enough to be worn at home, but sufficiently aesthetic to be seen out and about in”. She wanted to create garments that women could dress up or down and which they felt good in “no matter their shape, age or size”. While Ms Taylor initially planned to design garments for women, she ultimately intended to expand her label into menswear.
Ms Taylor wanted to ensure that the process of designing and manufacturing her clothing was kept in Australia. She thought that a “Made in Australia” aspect of the brand that she wished to build would be an asset. It would help to show the sustainability of the label and to reduce the carbon footprint in production of the garments, which would be an attractive quality for the brand. Ms Taylor wanted to have control over all aspects of the manufacturing process to ensure the quality of the garments. Having them made in Australia would allow her to have greater control and oversight of the goods produced which she thought would ultimately make her business easier to run.
Ms Taylor was aware that having her garments manufactured in Australia would cost more but she considered that the quality and sustainability of the goods and the positive qualities of the brand would outweigh the costs and allow her to charge more for her clothing.
Another important aspect of Ms Taylor’s business was that she intended to donate a proportion of its proceeds to an Australian charity. Ms Taylor wanted her business to have a positive impact on the community and she thought that this would also confirm the positive identity which she wished for the brand. Since inception the “KATIE PERRY” label has donated to a number of charities including Lucca Leadership Charity, bushfire appeals, breast cancer events and refugee organisations.
Ms Taylor described the process she has adopted since 2007 to produce her garments. It is not necessary to set it out in detail but in summary it involves Ms Taylor sketching the garment, preparing more detailed line drawings, instructing a pattern maker to create a pattern from her line drawings, sourcing the fabrics, having a sample made, finalising the pattern and sewing the garment. Ms Taylor described it as an iterative process which includes testing the fit of the garment on a model or mannequin.
On 19 December 2006, prior to leaving her job at David Jones, Ms Taylor began to take steps to establish her business. She registered an Australian business number (ABN) under the name “PALMS”, which was the name she initially chose for her label as a nod to her mother’s shop. However, in either December 2006 or January 2007 she was dissuaded from using the name “PALMS” by a friend, Christina Andoniou, who told her that it made her think of old people in Florida. As this was not the image Ms Taylor wished to convey she decided instead to use her name, “Katie Perry”. Ms Taylor was aware that numerous designers used their own names for their brands, citing for example Carla Zampatti, Collette Dinnigan, Leona Edmiston and Oscar de la Renta. At the time Ms Taylor did not want her label to be associated with the name Katie Howell given her falling out with her stepfather.
Ms Taylor cannot now recall precisely when in 2007 she decided to change the name of her business from “PALMS” to “KATIE PERRY”. However, she believes that it must have been sometime before April 2007 as on 5 April 2007 she applied to register the business name “Katie Perry”, which was subsequently registered on 12 April 2007. For reasons which Ms Taylor cannot now recall she did not update the trading name associated with her ABN to “KATIE PERRY” until 7 August 2007.
On 2 May 2007 Ms Taylor registered a domain name for her business at Ms Taylor had originally wanted to register the domain name because she dreamt of her brand going global. However, upon undertaking a search in about late April or early May 2007 that domain name appeared to be registered to a woman in the United Kingdom (UK) and, to this day, is still registered to that person. As she could not register the latter domain name Ms Taylor chose to register the Australian domain.
Ms Taylor left David Jones in February 2007. She thought that it would probably take some time to set up her new business. She was not only seeking to become a fashion designer but was also going to be running her own business and, until that time, Ms Taylor had only ever worked for others. Accordingly, after leaving her full time employment, in order to still earn money, Ms Taylor worked casually as a receptionist at a waxing salon and devoted her spare time to building her business. She estimated that in 2007 she spent about 30 hours per week developing her label and her business.
As this was the first time Ms Taylor was creating a business she sought out business training and, on 20 July 2007, she attended a business course for people starting their own businesses at Mosman Evening College. At the course Ms Taylor met other people who were in the same position as her including Manush Farhang who was also starting his own fashion label. Ms Taylor became friends with Mr Farhang and they helped each other out as they sought to establish their respective businesses.
On 21 August 2007 Ms Taylor registered an email address, [email protected]. In her business, Ms Taylor used that email address as well as two emails associated with her domain name: [email protected] and [email protected].
1.5 Ms Taylor makes her first application for registration of a trade mark
On 29 August 2007 Ms Taylor attended an IP Australia business course at which she learnt about the process for, and importance of, applying for trade marks and designs for her business and about copyright. At about this time she also engaged Three Dimensional Communication to design business cards, letterhead and swing tags for her garments.
On 13 September 2007 Ms Taylor applied to register a trade mark for a fancy logo based on the logo on her business card. The prominent feature of the logo was the words “KATIE PERRY” in cursive font. She applied for registration of the trade mark in class 42 for “clothing and fashion designing” (First KP Trade Mark). At the time Ms Taylor had not appreciated that goods and services belong to different classes. It was only in 2008 that she came to understand that in order to obtain better protection she should seek to register a mark in relation to clothes which were the type of goods she intended to sell.
By letter dated 4 January 2008 IP Australia informed Ms Taylor that her trade mark application no. 1198609 for the First KP Trade Mark had cleared the examination stage of the registration process and that it would be advertised on 17 January 2008, which would commence the three month opposition period. The letter noted that if Ms Taylor paid the registration fee of $250 by 17 July 2008 and no one raised an objection within the three month opposition period, or sought an extension of time in which to do so, IP Australia would automatically register the First KP Trade Mark when that period expired. IP Australia also warned that if the registration fee was not paid by 17 July 2008, the trade mark application would lapse.
1.6 Launching the Katie Perry label – October to November 2007
In about October 2007 a friend of Ms Taylor’s, Cameron Paulinich, who was a gardener at Kambala School, a private girls school in Sydney, informed Ms Taylor that the students were hosting a fashion parade to raise money for charity and asked her if she wished to be involved. The event was titled “Catwalk for a Cure” and was to raise money for the National Breast Cancer Foundation. Ms Taylor’s name was put forward as a potential designer and she was selected to dress some of the students for the parade. By that time Ms Taylor had finalised several designs, but had not yet produced her garments at scale. She had only one or two of each style made up which she was using as samples to locate a suitable production house. Nonetheless Ms Taylor considered the Kambala fashion parade to be a great opportunity to promote the “KATIE PERRY” brand and her designs so she agreed to debut them at the event. On 31 October 2007, prior to the fashion parade, Ms Taylor sent a press release to Radio Northern Beaches and New Woman Magazine about the launch of her label which provided:
The Kambala parade took place on 2 November 2007. Ms Taylor considered it to be a success and posted about the event on her personal Facebook page. Ms Taylor did not set up a Facebook page for the “KATIE PERRY” brand until 8 January 2009.
The Kambala parade generated interest in Ms Taylor’s brand and she received verbal inquiries asking where her garments were available. Ms Taylor gave evidence that, given her inexperience, she was not as prepared as she should have been and was not in a position to take full advantage of the interest at the time. She had not yet ramped up production as she had not been able to locate a suitable production house nor had she set up a website at her registered domain name.
1.7 Ms Taylor establishes a production chain
As set out at [42] above, Ms Taylor wished to have her garments made in Australia. When starting out Ms Taylor found it very difficult to identify a suitable production house to manufacture her garments on a relatively small scale using her preferred fabric which was both reliable and reasonable in price. As a result, when Ms Taylor first commenced production she retained different people for each step of the production process, including pattern makers, fabric suppliers, cutters and manufacturers.
In order to gauge interest in garment colours and styles and to determine what to produce, on 15 November 2007 Ms Taylor undertook a survey of her friends and acquaintances. By the end of 2007 she was ready to produce her designs at volume but she still needed a production house willing to make the clothes in the smaller quantities required. After making enquiries, she identified a suitable candidate and from 2008 she began working with Kim Phung and his production house.
1.8 Ms Hudson – 2007 to 2008
Ms Hudson’s career was also developing.
In about April 2007 Ms Hudson changed her record company to Virgin which was then owned by EMI. It merged with Capitol Records when Universal Music acquired EMI in 2012. Mr Jensen considered this to be a major development in Ms Hudson’s career because, based on discussions at the time with executives at Virgin, he understood it was committed to the development of Ms Hudson’s career as a solo artist which was her career ambition.
From that time there was increased activity associated with Ms Hudson’s career, in which Mr Jensen was closely involved, including continued writing, production and recording of music, promotion of Ms Hudson and her music and planning for commercial opportunities.
In November 2007, in advance of the planned release of a Katy Perry album, Ms Hudson’s single “Ur So Gay” and music video was digitally released on the youth oriented social media website, MySpace. It was immediately very popular and, without active promotion, it “went viral”. An Extended Play (EP) including the single was subsequently released and from 15 January 2008 was available for purchase (in a compact disk (CD)).
After its release the “Ur So Gay” single received publicity in:
(1)the US Out Magazine online in an article titled “You probably think this song is about you” dated 19 November 2007;
(2)the US McClatchy Tribune Business newspaper online, which was accessible in Australia from 5 December 2001, in an article titled “Katy Perry makes Bay Area debut: New Year’s show introduces buzz-worthy up-and-comer” dated 28 December 2007;
(3)the US Billboard Magazine online, which was accessible in Australia from 8 January 1994, in an article titled “The Billboard Reviews Singles” dated 12 January 2008; and
(4)a radio interview on the Johnjay & Rich Radio show on Phoenix’s 104.7 KISS FM station in April 2008 in which the artist Madonna mentioned Ms Hudson’s “Ur So Gay” single. A transcript of that interview prepared by the respondents’ lawyers includes the following exchange between Madonna and the two presenters:
Presenter 2: Do you have something geeky on your iPod that you love that you wouldn’t admit to many people?
Madonna:Geeky?
Presenter 2: Yeah, something that is not yours but just kind of out of context for you.
Madonna:Well I have a favourite song right now
Presenter 1: What’s that?
Madonna:It’s called … it’s called ‘Ur so gay and you don’t even like boys’
Presenter 2: [Laughing] That sounds awesome.
Presenter 1: That might be a song about me.
Madonna:Have you heard it?
Presenter 2: Is it…
Madonna: You have to hear it.
Presenter 2: Is it a children’s song?
Madonna:It’s by an artist called Katy Perry
Presenter 2: Let me look it up.
Presenter 1: Look it up while we see if we can find it
Madonna:Oh it’s so good. Check it out on iTunes.
Presenter 1: Sounds like the story of my life.
Presenter 3: Jesus John.
Presenter 2: Katy Perry.
According to Mr Jensen the “Ur So Gay” single was successful in several countries including the US, with over 500,000 sales and Gold Certification by the Recording Industry Association of America, and Brazil, with over 100,000 sales and a Platinum Certification by Pro-Musica Brazil. In 2008 the “Ur So Gay” single also peaked at number one on the American Billboard Hot Dance Single Sales Chart.
In late 2007 Mr Jensen observed that Ms Hudson’s popularity started to grow in Australia. This growth continued with the release of Ms Hudson’s singles in early 2008 and her album in June 2008, as described below. From at least early 2008 Mr Jensen considered that Australia was going to be an important market for Ms Hudson’s career.
In January 2008, in response to the positive reception and attention given to the “Ur So Gay” single, a seven inch vinyl version of it was released. It was available for purchase and was used on behalf of Ms Hudson as promotional merchandise.
From early 2008 Mr Jensen and others involved in the development and management of Ms Hudson’s career planned for her to undertake a number of promotional and performance activities before a worldwide concert tour scheduled to take place in 2009.
In addition in early 2008 Ms Hudson was invited to perform in the US summer at the “Warped Tour”, a US rock music tour which has operated since 1995, usually at outdoor venues, with a strong emphasis on punk rock. Its major sponsor has traditionally been the Vans skateboard shoe brand and the tour is often called the “Vans Warped Tour”. The “Warped Tour” later toured to some overseas countries.
On 8 April 2008 Ms Hudson performed the “Ur So Gay” single live on “Last Call with Carson Daly”, a US television variety program.
In April 2008 Mr Jensen was touring Australia with artist k.d.lang. While here he met with Michael Coppel, an Australian concert promoter. Mr Jensen mentioned Ms Hudson to Mr Coppel informing him that he should “look out for this artist”. Mr Jensen recalls that he said words to the following effect to Mr Coppel:
I encourage you to take note of Katy Perry. Let me know if you wish to be in touch with Katy’s local Australia record label EMI.
On 17 June 2008 Ms Hudson released her second studio album “One of the Boys” which included the song “Ur So Gay” and the singles “I Kissed a Girl”, “Hot n Cold”, “Thinking of You” and “Waking Up in Vegas”. The “One of the Boys” album and those singles ranked on international music charts. Following its release the album attracted media attention including in a number of Australian online publications such as:
(1)The Daily Telegraph newspaper, available in NSW, Australian Capital Territory and Queensland, which featured an article titled “Listen up: Album of the week”, dated 31 July 2008, which, among others, reviewed “One of the Boys”;
(2)The Herald Sun newspaper which featured an article titled “from gospel to gay” dated 7 August 2008;
(3)The Adelaide Advertiser newspaper which featured an article titled “Miss versatility” dated 7 August 2008;
(4)The Sunday Age newspaper which featured an article titled “One of the Boys: Reviews - CDs” dated 10 August 2008;
(5)The Brisbane Courier Mail newspaper which featured an article titled “CD Reviews” dated 14 August 2008, which included a review of the “One of the Boys” album;
(6)The Age newspaper which featured an article titled “One of the Boys: Music” dated 15 August 2008;
(7)The Brisbane Sunday Mail newspaper which featured an article titled “[POP] One of the Boys Katy Perry” dated 17 August 2008;
(8)The Townsville Bulletin newspaper which featured an article titled “cds: The title track is fitful and energetic and the lyrics tell of Katy Perry’s desire to be one of the girls not one of the boys” dated 21 August 2008;
(9)The AAP Bulletin Wire newspaper which featured an article titled “Katy Perry double hits Aussie top 10” dated 15 September 2008; and
(10)The Gold Coast Bulletin newspaper featured an article titled “CD Reviews” dated 16 September 2008 which included a review of “One of the Boys” album.
In anticipation of Ms Hudson’s participation in the “Warped Tour” Mr Jensen pursued merchandising opportunities. In addition:
(1)on 12 June 2008 he caused an application to register “KATY PERRY” as a trade mark for apparel in class 25 to be lodged in the US; and
(2)on 26 June 2008 he caused an application to register “KATY PERRY” as a trade mark for music, CDs and other goods in class 9 and for entertainment and other services in class 41 to be lodged in the US.
Mr Jensen and his colleagues at DMG arranged for a range of “KATY PERRY” branded merchandise to be specially designed and produced for the “Warped Tour” by a US company called Chaser. This included various clothing items and other merchandise including heart shaped glasses, lip balm (cherry chapsticks) and tote bags. At each concert during the tour there would be an official “Warped Tour” merchandise booth where fans could buy merchandise from the various bands who were performing. Mr Jensen and his colleagues at DMG planned and arranged for the Katy Perry section of the merchandise sales area to be colourful, fruit themed and “girly”, making it distinctive and different from the merchandise offered by other bands. An image of Ms Hudson at the “Warped Tour” “KATY PERRY” branded merchandise booth taken from a YouTube video appears below:
The “Warped Tour” commenced on 20 June 2008 in Pomona, California and ended on 17 August 2008 in Carsen, California. Mr Jensen attended some of the concerts and was otherwise kept informed by the tour manager and Mr Cobb, who also attended a number of the concerts, about all aspects of Ms Hudson’s performances, promotional events and merchandise. Ms Hudson performed about 40 concerts, performing on the main stage on every date of the tour except for 10 and 11 July 2008. On 20 June 2008, at the beginning of the “Warped Tour”, Ms Hudson performed her single “I Kissed a Girl”.
During the northern hemisphere summer of 2008 Ms Hudson’s commercial and career momentum increased. Mr Jensen observed that: Ms Hudson was very popular on the “Warped Tour”, attracting large audiences that sought out her performances; at the time her three singles, including “I Kissed a Girl”, were popular on radio and received extensive airplay; and, while the album “One of the Boys” was slower to gain sales following its release in 2008, it was ultimately successful. The “End of year chart – top 100 singles in 2008” published by the Australian Recording Industry Association (ARIA) shows that for 2008 Ms Hudson’s single “I Kissed a Girl” was at number six and her single “Hot n Cold” was at number 16.
During Ms Hudson’s 2008 performances and promotional appearances Mr Jensen observed that she was popular across a wide cross section of people, including teenage boys and girls. In 2008 Ms Hudson’s popularity quickly spread internationally including because of international coverage of her performances on the “Warped Tour” and because of the popularity of the singles she had released, including “I Kissed a Girl”, on radio in a number of countries such as the UK, Japan, Germany, France, Australia, New Zealand, Italy, Spain, Russia and South America.
Mr Jensen together with, among others, his partners and staff members at DMG and executives and staff members of the record company, proceeded in the northern hemisphere summer of 2008 with planning a substantial North American and international promotional tour for Ms Hudson during which she would undertake a range of scheduled events promoting her album. They included personal appearances, radio and television interviews, meet and greets with fans, small venue concert appearances, meeting local record label personnel and events aimed generally at increasing Ms Hudson’s visibility. The overseas markets for the tour included the UK, Canada, Germany, Spain, Mexico and Australia, as explained below, with the visits to take place in the last few months of 2008. During the tour, the concert dates in countries where Ms Hudson was to perform during her 2009 worldwide tour were to be announced.
In the course of 2008 Ms Hudson received publicity in Australian newspapers and magazines including The Age, The Brisbane Courier Mail, The Sunday Herald, The Guardian, The Daily Telegraph and The Canberra Times. For example an article appearing in The AAP Bulletin Wire Australian newspaper dated 15 September 2008 reported:
Given Mr Jensen’s view about the importance of the Australian market to Ms Hudson’s career, by mid 2008 he considered that the next logical step was for her to include Australia in her 2008 promotional tour and in the itinerary for the 2009 world concert tour.
In July 2008 Mr Jensen corresponded with Mr Coppel by email in relation to Ms Hudson and her upcoming promotional visit to Australia and anticipated concert tour. An email dated 22 July 2008 with subject “Re: Katy Perry” from Mr Jensen to Mr Coppel included:
I am thrilled that you will be our promoter for Katy Perry in Australia. You’ll recall that I mentioned Katy to you when we ran into each other at the Intercontinental in Sydney. We have been managing Katy for the past four years, taking the time to develop her and set up the album for release. She might seem like an ‘overnight sensation’ to the outside world, but it’s been a long and involved road to get to where we are today. As you probably know, she’s doing incredibly well in North America and it’s now starting to ‘take off’ in the rest of the world. The success of the single, ‘I Kissed A Girl’ in Australia is phenomenal. And, we have high hopes for the album release on August 2. Needless to say, we’re very excited.
Katy is an edgy pop artist with a long career ahead if we do this right. She wrote (or co-wrote) all the songs on the album. She is a very determined woman, has a compelling personality, is sexy and extremely talented. You’ll know what I mean when you meet her .... she’s infectious and ambitious!
Again, I’m thrilled that you will be our ‘promoter’ partner in Australia, and we look forward to working together to build Katy’s concert career. I know Emma is in contact regarding the showcase gigs in October, and please know that management is available to help in any way possible. You’ll see Bradford Cobb, Katy’s primary manager at Direct Management, when he’s with Katy during the promotion trip. You’ll remember that Bradford was with the B-52’s when they played the Hordern Pavilion for you several years ago. I’m copying Bradford on this email so you have his contact information.
Cheers,
Steve
In August 2008 Messrs Jensen and Coppel exchanged further emails about Ms Hudson’s album debut on the Australian album charts, which came in at number 12.
1.9 The development of KATY PERRY merchandise
By July 2008, based on Ms Hudson’s success, her increasing popularity and in anticipation of her global concert tour, Mr Jensen considered that there was a significant commercial opportunity for sales, including online sales, of “KATY PERRY” branded merchandise. Accordingly, he commenced planning and carrying out various activities to take advantage of that commercial opportunity in all countries where Ms Hudson was popular at the time, including Australia.
From July to September 2008 Mr Jensen was involved in the planning and preparation for Ms Hudson’s promotional tour in 2008 and subsequent world concert tour in 2009, including her travel to and touring in Australia. At the same time Mr Jensen was also involved in activities related to promoting commercial opportunities for “KATY PERRY” branded merchandise. As to the latter Mr Jensen had Australia in mind as a market of interest and importance and considered that “KATY PERRY” branded apparel and other merchandise would be popular and would sell well in Australia including at concert venues, retail stores and online.
In July 2008 Mr Jensen commenced discussions in relation to “KATY PERRY” branded merchandise with Tom Donnell of Bravado International Group Inc., a merchandise company that operated in the music industry. In these reasons, I will refer to that company and any of its related entities, including Bravado International Group Merchandising Services, Inc, as Bravado. Bravado’s role was to arrange merchandise designs for approval and, when approved, to arrange for the manufacture and distribution of licensed merchandise for advertising and sale, including through other intermediaries and resuppliers.
Having worked with Bravado and Mr Donnell for 15 years, Mr Jensen was aware that Bravado provided branded merchandise to distributors for resupply to retailers including the supply of mass market merchandise to department stores for retail sale to consumers. The branded merchandise was advertised by the retailers and through other promotional activities and was offered for sale and sold to members of the public by the retailers.
In or about 2008 or 2009, before her first world concert tour, Mr Jensen introduced Ms Hudson to Mr Donnell and his colleagues at Bravado, including those involved in the design of products. Mr Jensen recalls that he had discussions with Ms Hudson about his prior experiences working with Bravado and that Ms Hudson accepted his recommendation that they work with Mr Donnell and Bravado.
Following the development of the internet in the 1990s, it was also Mr Jensen’s experience that branded merchandise was sold to members of the public through websites, where orders could be placed electronically or by calling an advertised telephone number. Since at least the late 1990s this was another channel of sales used by Bravado and Mr Jensen for artists for their branded merchandise.
By email sent on 22 August 2008 Mr Donnell provided Mr Jensen and others with proposed “I Kissed a Girl” designs noting that there would be “a few more to choose from in the master presentation coming next week”. Mr Jensen responded indicating that he and Mr Cobb would review the designs over the weekend and asked “[h]ow fast could we get this ready?”. By email dated 23 August 2008 Mr Donnell responded in the following terms (as written):
We will release to sell the day it’s approved on paper. About one week to sample and then a week to manufacture. Retailers and Etailers will determine distribution timeline, but would think product will land in the market four weeks from approval. Seems like a long time, but the key is circulating approved designs. Once buyers know have something to buy, they will lock in and wait for product to arrive.
By email dated 6 September 2008 from Shannon Biliske of Bravado to, among others, Messrs Jensen and Cobb, Ms Biliske provided the initial merchandise design concepts for “Katy Perry”. There followed an exchange of emails with feedback about the proposed online store.
By email dated 9 September 2008 David Weekes of Red Octopus contacted Mr Cobb inquiring if DMG was interested in enlisting its help with merchandise production or sales for Ms Hudson’s upcoming Australian tour. Mr Jensen forwarded Mr Weekes’ email to Mr Coppel. By email dated 11 September 2008 with subject “merchandise for Katy Perry’s upcoming Australian tour” Mr Coppel responded to Mr Jensen in the following terms (as written):
I’ve never heard of Red Octopus, and I think Derek is out of the business, isn’t he?
I have an on-going merch deal with Simon Lonergan at TSP, who handles any of my tours for which I have merch rights, as well as a bunch of major acts ((including RHCP, Pearl Jam, The Police, RATM, Christine Aguillera, Gwen Stefani etc), as well as local artists and start up club tours.
He has his own T shirt printing factories so can do quick turnaround and good pricing.
So I’m happy to sort out any merch requirements you have for the promo shows on a straight split of net income, if that suits?
On 11 September 2008 Mr Jensen sent an email with subject “katy perry retail merch” to Mr Donnell, among others, which included:
I don’t want to shock you, but we have one design approved for retail sale and should have one or two more by tomorrow. The approved design is attached. Let’s get rolling on this one.
sj
On 16 September 2008 Mr Jensen sent a further email to, among others, Mr Donnell with subject “Katy Perry/Approved t-shirt” which included:
The attached t-shirt is now approved for retail. I’d especially like to get this out in the UK, Europe, Australia and Japan quickly. How do we do that?
Let’s talk today about ‘where we’re at’ on retain merch. I’m in Cologne and available on my cell, XXX.XXX XXXX.
Cheers,
Steve
At the time Mr Jensen and his colleagues at DMG were also organising a “Katy Perry” doll (Katy Doll). The Katy Doll was designed by a Taiwanese/Canadian artist and fashion designer, Jason Wu, and made and sold by New York toy maker Integrity Toys. It was dressed in a belted gold mini dress and was inspired by the outfit Ms Hudson wore in the “I Kissed a Girl” music video. Only around 500 Katy Dolls were made and around 150 of them were distributed within the record industry for giveaways. It is now a collectible item. Mr Jensen recalls that in 2008 Ms Hudson ran a sweepstakes competition on her MySpace page and the winner was given a Katy Doll. The Katy Doll was available for purchase in late September 2008 on the Integrity Toys official website and was sold out on pre-orders as at 10 October 2008.
1.9.1Launch of the Katy Perry webstore
On 24 September 2008 Mr Donnell informed Mr Jensen by email that the “Katy Perry web store” was live and ready to be linked to Ms Hudson’s homepage and provided a link. Mr Jensen reviewed the link and provided feedback by return email. Mr Jensen understood that launch of the webstore meant that “KATY PERRY” branded merchandise, including t-shirts and other apparel and merchandise, would be advertised, offered for sale and available for purchase from Bravado either online or by telephone order which could be placed from outside the US including by members of the public in Australia.
The evidence as to when the website went live was unclear. Initially Mr Jensen said that he understood it was from 24 September 2008. But that cannot be so given Mr Jensen’s email of 24 September 2008 requesting changes to the site and subsequent material shown to him. Indeed, in cross-examination Mr Jensen ultimately accepted that the webstore went live and was publicly available in early October 2008 and I find that to be so.
A screenshot, obtained from the Wayback Machine as at 10 December 2008, showing the “Katy Perry” webstore at katyperry.shop.bravadousa.com (Bravado Website) appears below:
Mr Jensen recalls that a few days after the “Katy Perry” webstore went live on the Bravado Website it also went live on Ms Hudson’s own website via a link which, in turn, automatically linked to the Bravado Website. Relevantly, an announcement dated 7 October 2008 on Ms Hudson’s official site provides:
Katy’s Webstore is Now Live!
Shop Katy Perry!
Click here to go to Katy’s official webstore now
Mr Jensen understood that members of the public from any country around the world, including Australia, who could access Ms Hudson’s website were able to purchase “KATY PERRY” branded merchandise through it.
1.9.2Initial arrangements with Bravado
On 18 November 2008 Mr Donnell provided DMG with an updated confidential proposal for the distribution and sale worldwide for Ms Hudson’s upcoming world tour of “KATY PERRY” branded merchandise (November 2008 Proposal). A formal contract was not entered into with Bravado until 2011 (see [204] below). Until that time the terms set out in the November 2008 Proposal were treated by DMG and Bravado as binding and, according to Mr Jensen, they conducted themselves generally in accordance with the terms of that proposal until such time as they entered into a contract in 2011. The November 2008 Proposal set out the terms for the distribution and sale of merchandise including the percentage royalties payable in each tour country, which included Australia, and definitions of the terms “Tour Sales” and “Tour Profits”.
As set out below, “KATY PERRY” branded merchandise continued to be developed and sold. It was not in dispute that Ms Hudson was closely involved in the selection and approval of designs and items of merchandise to be offered for sale generally and in particular geographic regions.
1.10 Ms Hudson’s promotional tour – 2008
On 9 September 2008 Ms Hudson commenced her promotional tour in the UK. The other countries included in the promotional tour were France, Germany, Italy, Spain, Japan, Mexico and Australia. In each of the European cities to which she travelled Ms Hudson appeared and performed on television programs and at radio stations, was interviewed by magazines and news publications and participated in interviews and fan meet and greets. The tour was the subject of media in the UK, France and Spain.
In September 2008, before Ms Hudson’s arrival in Australia, there was publicity about her intended visit and the fact that she would be performing concerts in Sydney and Melbourne, with tickets going on sale on 12 September 2008. The Australian leg of the promotional tour ran from 10 to 14 October 2008. There were a number of articles published about Ms Hudson while she was in Australia during that period.
In an email dated 15 October 2008, with subject “Katy Perry is a true star…”, from Glenn Dickie, EMI Music Australia Label Manager Capitol & Virgin to, among others, Mr Jensen, Mr Dickie reported on the Australian leg of Ms Hudson’s promotional tour. His email included:
While Katy has been here we have covered nearly every major TV, Press and Radio in both Australia and New Zealand, had paparazzi fights that were caught on film and two rocking’ shows (with Melbourne 10 tickets off selling out) that really showed that Katy’s got the live skills to pay the bills and won a lot of sceptics over.
All of our hard work and attention to Katy and One Of The Boys is paying off as we are now GOLD on One Of The Boys continuing on from our platinum sales plus sales of I Kissed A Girl. Congratulations to everyone locally and internationally for this excellent achievement. Now it’s time to get to platinum!!!
We still have lots of TV, radio and press interviews to roll out over the coming weeks including what we expect to be great live reviews as well as Sunday nights ROVE performance that will air in New Zealand on Friday night.
…
TV advertising starts from next week to back up the tour and we should see One Of The Boys heading up the charts. One Of The Boys will be One Of The Must have Albums of this Christmas.
…
1.11 Filing of the application for registration of the Applicant’s Mark
As at 2008 Ms Taylor did not realise that she had not paid the registration fee for the First KP Trade Mark. An Australian trade mark search for trade mark application no. AU1198609 shows that the trade mark was advertised on 17 January 2008 but that it lapsed on 17 July 2008. It also shows that on 19 June 2008 “Registration Fee Reminder” correspondence was sent but on 2 July 2008 that correspondence was returned to sender. Ms Taylor explained that at that time she was no longer residing at the address she had used to apply for registration of the First KP Trade Mark and thus did not receive the reminder correspondence.
On 9 July 2008 Ms Taylor sent an email to IP Australia requesting a change of address to her PO Box in Spit Junction, NSW.
In about August 2008 it occurred to Ms Taylor that she had not yet paid the registration fee for the First KP Trade Mark. She called IP Australia and was informed that she could still register her mark but that she would have to pay late fees in addition to paying the registration fee.
It was at about this time or shortly thereafter that Mr Farhang informed Ms Taylor that he was going to apply for another trade mark in class 25. He advised Ms Taylor that she should do so too and that she should apply for a word mark because it would give her more protection if she wished to change her logo later. Following that discussion Ms Taylor made a decision to apply for a word mark in class 25. However, as her business was small and self-funded she did not consider that she could maintain two trade marks. Accordingly she decided to let the First KP Trade Mark application lapse and on 29 September 2008 she applied for registration of the word mark “KATIE PERRY” in class 25 for clothes, i.e. the Applicant’s Mark.
By letter dated 7 October 2008 IP Australia notified Ms Taylor that her trade mark application for the word mark “KATIE PERRY” had been received and filed as trade mark application no. 1264761 with a filing date of 29 September 2008.
On 18 December 2008 Ms Taylor received an early notice of acceptance from IP Australia for her word mark “KATIE PERRY”. IP Australia noted that trade mark application no. 1264761 had passed the examination stage and that the next step was advertising in order to give other people an opportunity to oppose registration of the trade mark.
1.12 The KATIE PERRY fashion label - 2008 to 2009
In or about May to June 2008 Ms Taylor was part of the New Enterprise Incentive Scheme, a government program for a Certificate IV in Business. Through this program Ms Taylor attended seminars in relation to small business management and, as part of the program, she prepared a business plan for her KATIE PERRY label.
Since 2007 Ms Taylor has accumulated a database of over 200 people. She sent Katie Perry newsletters on a monthly basis to the contacts in her database. The newsletter bore her logo, a message from her in relation to the brand and some images. In it she shared news about the progress of, and any updates on, the brand and made announcements about where she was going to be, what she was going to be doing, new products and so on.
In the early stages of development of her brand Ms Taylor considered wholesaling to high end boutiques and visited stores and events in preparation. For example, in September 2007 she attended Melbourne Fashion Week for inspiration, to undertake market research and to seek out boutiques she could potentially approach. Ms Taylor also considered selling goods at Paddington Markets, in Paddington, NSW. She wished to grow organically and use the markets as a launch pad to get customer feedback. At the time Ms Taylor considered Paddington to be a fashion hub and, prior to working at David Jones, had been the store manager at the Oroton store located in Paddington, across the road from the markets. She observed that the markets, which were open every Saturday, always had high foot traffic from both local and overseas visitors and she frequently visited there during her lunch break so she knew of the types of stalls that were there and the demographics of the customers. Ms Taylor understood that Paddington Markets focussed on high quality Australian made brands, Australian made fashion, jewellery and accessories and she considered that her Australian luxury loungewear would be well accepted at the markets.
Along with having physical presence Ms Taylor also planned to sell her garments through an e-commerce website. Although she had wanted to set up a website, since registering her domain name she could not do so until sometime later for two reasons. First, she needed the garments to be produced at volume and ready to be sold. Secondly, as far as she was aware e-commerce was not big with Australian suppliers and consumers at the time which meant that developing a suitable website with e-commerce facilities was not inexpensive. Therefore Ms Taylor decided to develop the website in stages.
In late 2007 Ms Taylor engaged Tanveer Kalani to prepare a landing page for her website. From January 2008 she worked with Mr Kalani to set up the website. For most of 2008, while it went through a number of variations, the website was fairly rudimentary. It was a “splash” screen with the Applicant’s Mark, and had details about the brand and contact details. There was no e-commerce facility. As at 18 July 2008 the website appeared as follows:
On 16 May 2008 Ms Taylor received a letter of approval from Paddington Markets accepting her application for registration as a stallholder.
By July 2008 high volume manufacturing of Ms Taylor’s collection was complete. Thus on 18 July 2008 Ms Taylor organised and supervised a photoshoot of the collection. One of the main reasons for obtaining high quality professional photos was for use on the online store. Copies of the photographs which were taken at the time were in evidence before me and included:
In anticipation of opening her Paddington Markets stall Ms Taylor organised for Eftpos merchant facilities with the Commonwealth Bank of Australia and on 22 July 2008 was provided with a merchant facility number.
Ms Taylor opened her stall at Paddington Markets for the first time on Saturday, 2 August 2008. Although she had originally intended to have a stall there for only a few months, she maintained her stall at the market for around seven years.
In August 2008 Ms Taylor engaged David Waters of DJW Designs to set up an e-commerce website. From August to December 2008 she worked with Mr Waters to design and create a comprehensive website with e-commerce facilities and a platform where she could share more about herself and her brand through a blog.
By November 2008 Ms Taylor outgrew working from home and rented a storage unit. At that time she was also nominated as a finalist for the 2threads Fashion Awards in the “best up and coming designer” category.
In order to promote her brand Ms Taylor attended, and was part of, as many fashion related events as possible. In 2008 one of the main events in which she participated was the Duke of Edinburgh Award’s fundraising event, “Dressed to Kilt – a Tartan Fashion Extravaganza” held on 19 November 2008 at Doltone House, Jones Bay Wharf, NSW. Ms Taylor was asked by the organisers to design a garment with the theme “a touch of tartan” and her garment, along with those of other designers, was showcased and auctioned at the charity event.
By early December 2008 Ms Taylor’s website was up and running with an online store. To celebrate the launch she ran a promotion for the month of December for all online purchases. A copy of the website at as taken from the Wayback Machine appears as follows:
Ms Taylor also applied for and was allocated a stand to participate at the “Fashion Exposed” trade show to be held at the Sydney Exhibition Centre in March 2009. Ms Taylor had a stall showcasing her latest range of KATIE PERRY clothing. She spoke to numerous retailers hoping to have her label sold in their boutiques and, as a result, “picked up” a boutique in Kiama called “Classy Lady”. Unfortunately, as the boutique did not pay Ms Taylor for the stock it purchased from her, in about October 2009 Ms Taylor had to retrieve the leftover stock. Given this experience Ms Taylor decided to change her focus away from wholesaling. Although her clothing was still stocked in “Mushroom Boutique” in Queensland and in another local store, she no longer actively sought to wholesale her range but focussed her attention on her own stores.
Ms Taylor looked for a showroom which she could also use as a workspace, retail space, display room and for promotional events. On 1 April 2009 she signed a lease for a showroom at 2/87 Avenue Road, Mosman, NSW and on 4 June 2009 she launched the opening of the showroom with an event where she showcased and sold items from her collection.
Generally Ms Taylor would set up the showroom from Monday to Friday, opening it to the public from Tuesday to Thursday. If clients wished to attend at a different time they were able to make a private booking. On Saturdays she continued to sell her clothing at Paddington Markets. Ms Taylor’s showroom was on the second floor of the building at 2/87 Avenue Road, Mosman and she hung the clothes on the shop front. There was “KATIE PERRY” signage on the window, a “KATIE PERRY” light box on the street, which also displayed Ms Taylor’s website address, and another “KATIE PERRY” sign on the wall at the entrance to the steps which led to the showroom, which also displayed her website address. Even now people occasionally ask Ms Taylor questions about the showroom in Mosman. A photo showing the signage which appeared at the showroom appears below:
The respondents rely on four particular acts by Ms Taylor which they contend encouraged Ms Hudson, and her representatives, to believe that Ms Taylor was happy for Ms Hudson to co-exist with her in the sense that she would not object to the application of the Katy Perry Mark on clothes so long as Ms Taylor could also continue with her business. They are:
(1)the YouTube message posted by Ms Taylor i.e. the 29 June 2009 Video (see [154] above). On 30 June 2009 Ms Taylor forwarded her YouTube message to Mr Venus, Ms Hudson’s lawyer, as she wanted Ms Hudson to see it. By the YouTube message Ms Taylor invites Ms Hudson to visit her studio when touring Australia in August 2009 and states that she is “no threat whatsoever” to Ms Hudson. In cross-examination Ms Taylor did not accept that in doing so she had intended to convey that Ms Hudson could use the Katy Perry Mark on clothes. That may be so but the message did convey her view that the two women could co-exist such that each could be left to pursue their “dreams” which I take to mean their respective business interests;
(2)Ms Taylor’s blog post made on 3 July 2009 (see [157] above) in which she said that she wished “for this to all end positively”;
(3)the article published in the Sydney Morning Herald on 5 July 2009 (see [159] above) which referred to Ms Taylor’s statement in the 29 June 2009 Video that she was “absolutely no threat” to Ms Hudson and which cites Ms Taylor as hoping the dispute would be “settled” before the hearing in the Trade Marks Office and stating that Ms Hudson’s lawyers had “[come] back to [Ms Taylor] wanting to have a more amicable settlement”. Mr Jensen said this article did not give rise to any concern that Ms Taylor might sue Ms Hudson for trade mark infringement because of Ms Taylor’s statement that there was no confusion between her and Ms Hudson. However, read in context that statement is qualified by the very next statement, namely that Ms Taylor is a designer and Ms Hudson is a singer; and
(4)at all times up to the withdrawal of the Extension of Time Application, Ms Taylor, both personally and through her lawyers, indicated that she was entirely happy to co-exist with Ms Hudson, the parties exchanged draft deeds and the only disagreement between them as to the terms of those deeds concerned proposed non-disparagement clauses.
The respondents submitted that, despite no agreement being reached, that context remains relevant to the Court’s assessment of the laches, acquiescence and delay defence and did not simply evaporate once the Extension of Time Application was withdrawn. They contended that the nature of the negotiations between the parties, coupled with Ms Taylor’s media statements to the effect that she was no threat to Ms Hudson, encouraged Ms Hudson and Mr Jensen to understand that, while there was a theoretical risk of Ms Taylor suing for trade mark infringement, it was not one of concern to them. They observed that even after the events of 2009 Ms Taylor continued to promote her business by reference to Ms Hudson and submitted that these were not actions of a trader disgruntled by infringing conduct but, rather, actions that reinforced Ms Taylor’s acquiescence in the infringing conduct.
It is difficult to see how, once the negotiations for entry into a co-existence agreement broke down, the respondents could take any comfort from them or the fact that they had come close to resolving their dispute. The fact is that they did not, the Extension of Time Application was withdrawn because of the advice Mr Jensen received that it would fail, which would attract further publicity and further embolden Ms Taylor, and the Applicant’s Mark was registered and remained registered. Added to that Ms Hudson’s TM Application was amended to remove class 25.
Similarly Ms Taylor’s message in the 29 June 2009 Video and blog post were made at a time when the Extension of Time Application was on foot, Ms Taylor felt that her business was under threat and she resorted to those messages in an attempt to resolve the matter, either by appealing to Ms Hudson directly or possibly attracting media which would pressure Ms Hudson into resolving the dispute. There is no reason to doubt that Ms Taylor believed at the time that both women could pursue their own businesses using the same name. But, it is difficult to see how once the negotiations broke down with no resolution of the dispute, the respondents could take any comfort from these statements in relation to future conduct. To the contrary, Mr Jensen acknowledged that in moving forward the respondents took a calculated risk.
While I do not think that those matters amount to acquiescence by Ms Taylor, the respondents also point to the fact that Ms Taylor continued to promote her business by reference to Ms Hudson. That is the case. Three examples of where she did so are set out at [220] above. They span the period 2011 to 2017. At no time when Ms Taylor attempted to improve her own profile by reference to Ms Hudson’s activities and career, did she complain about Ms Hudson, allege that she was infringing the Applicant’s Mark or refer to the fact that she was selling clothes bearing the Katy Perry Mark in Australia. It is inconceivable that Ms Taylor, who felt sufficiently aggrieved by 2018 to approach Mr Silberstein, did not become aware of that latter fact at some point in that period. But the issue that remains is that the time at which Ms Taylor became so aware is not known. As a result, to the extent Ms Taylor may have encouraged Ms Hudson (and Mr Jensen) to believe reasonably that the respondents’ acts in selling clothes bearing the Katy Perry Mark were accepted by her, Ms Taylor’s knowledge of the nature of the allegedly infringing conduct and the time from which she knew it was taking place is not known. Accordingly, it is not possible to make a finding as from when Ms Taylor may have acquiesced in the respondents’ infringing conduct and to thus take the conduct into account in considering whether to order an injunction or reduce the period in which Ms Taylor is entitled to an account of profits, should she elect for an account of profits rather than damages.
4.1.3Conclusion
In my view, Ms Taylor is entitled to an injunction against Kitty Purry to restrain it from continuing engaging in infringing conduct.
4.2 Is Ms Taylor entitled to additional damages?
Section 126(2) of the TM Act empowers a court to include an additional amount in the assessment of damages for infringement of a registered trade mark if the court considers it appropriate to do so having regard to:
(a) the flagrancy of the infringement; and
(b) the need to deter similar infringements of registered trade marks; and
(c) the conduct of the party that infringed the registered trade mark that occurred:
(i)after the act constituting the infringement; or
(ii)after that party was informed that it had allegedly infringed the registered trade mark; and
(d)any benefit shown to have accrued to that party because of the infringement; and
(e) all other relevant matters.
In Truong Giang Corporations v Quach (2015) 114 IPR 498; [2015] FCA 1097 Wigney J observed at [132] that there was little authority concerning the application of s 126(2) of the TM Act but distilled the following principles (at [133]-[140]) having regard to its similarity to s 115(4) of the Copyright Act:
[133]First, it is not necessary that any amount of additional damages be proportionate to any award of compensatory damages: Futuretronics.com.au Pty Ltd v Graphix Labels Pty Ltd (No 2) (2008) 76 IPR 763; [2008] FCA 746 (Futuretronics) at [17].
[134]Second, an award of additional damages involves an element of penalty: Facton Ltd v Rifai Fashions Pty Ltd (2012) 199 FCR 569; 287 ALR 199; 95 IPR 95; [2012] FCAFC 9 (Facton) at [33], [89].
[135]Third, part of the function of an award of additional damages is to mark the court’s disapproval or opprobrium of the infringing conduct: Facton at [36].
[136]Fourth, the matters set out in s 126(2)(a)–(d) of the TM Act are not preconditions to an award of additional damages: Futuretronics at [17].
[137]Fifth, conduct which may properly be seen as flagrant includes conduct which involves a deliberate and calculated infringement, a calculated disregard of the applicant’s rights, or a cynical pursuit of benefit: Futuretronics at [19]; Facton at [92].
[138]Sixth, post-infringement conduct within s 126(2)(c) of the TM Act is unlikely to include the respondent’s conduct of the infringement proceedings. Such conduct is more relevant to the appropriate order as to costs: Futuretronics at [17]; Flags 2000 Pty Ltd v Smith (2003) 59 IPR 191; [2003] FCA 1067 at [31]–[34]. That said, it is difficult to see why some aspects of the conduct, by a respondent, in defence of infringement proceedings, might not be relevant to the award of additional damages: compare Facton at [44], [69]. ...
[139]Seventh, an award of additional damages can encompass damages which, at common law, would be aggravated or exemplary damages: Futuretronics at [17]. The matters specified in s 126(2) of the TM Act are of a kind which are taken into account in determining whether a party is entitled to aggravated or exemplary damages at common law, but in the end result the damages to be awarded are not aggravated or exemplary damages, but additional damages, being of a type sui generis: Facton at [33]–[36], [91].
[140]In Halal Certification Authority Pty Ltd v Scadilone Pty Ltd (2014) 107 IPR 23; [2014] FCA 614 at [111], Perram J considered that if additional damages are appropriate, the damages to be awarded must operate as a sufficient deterrent to ensure that the conduct will not occur again.
Ms Taylor submitted that Ms Hudson’s conduct in using the Katy Perry Mark on clothes in Australia was flagrant for the following reasons:
(1)as evidenced by her email sent on 17 June 2009 (see [145(2)] above) Ms Hudson held Ms Taylor in contempt, which fuelled the conduct in 2009 and to this day;
(2)there is no evidence of use of the Katy Perry Mark on clothes in Australia until after Ms Hudson became aware of Ms Taylor’s trade mark application;
(3)Ms Hudson sought at first to bully Ms Taylor out of her application for the Applicant’s Mark and then to have her co-exist, which Ms Taylor refused to do;
(4)Ms Hudson sought to register the Katy Perry Mark in respect of clothes but failed because of the Applicant’s Mark;
(5)Ms Hudson was aware that Ms Taylor might object to her using the Katy Perry Mark on clothes, that Ms Taylor could sue and that if she did she would have a substantial chance of success; and
(6)despite all of this knowledge she “breezily ploughed on” and sold clothes bearing the Katy Perry Mark in Australia from August 2009.
The purpose of an award of additional damages is to mark the Court’s disapproval of the infringing conduct. That Ms Hudson expressed herself in somewhat colourful terms in the course of the negotiations in 2009 to her internal advisers does not, as Ms Taylor contended, demonstrate any contempt of Ms Taylor on her part and does not bear upon the question of additional damages. It was a private communication in which Ms Hudson expressed her frustration with the ongoing media attention and the issue generally.
The question of whether the conduct was flagrant requires consideration of whether the conduct involved a deliberate and calculated infringement, a calculated disregard of Ms Taylor’s rights or a cynical pursuit of benefit. In my view the following factors are relevant.
First, while Ms Hudson attempted to negotiate an outcome by which both she and Ms Taylor could co-exist and use their respective trade marks as they wished in Australia, those negotiations broke down and no agreement was reached. That said, I do not accept the characterisation of the correspondence which was first sent to Ms Taylor as bullying in nature. It made certain demands but, in the context of what was then occurring, it was not unusual. The two women were running their respective businesses with each wishing to use substantially the same trade mark for the same or similar goods. There is nothing untoward or unusual in those circumstances for one trader to make a demand of the other or to threaten proceedings in the event that certain things did not occur. This was and is, as Mr Jensen characterised it, a “normal business approach”.
Secondly, Ms Hudson withdrew her Extension of Time Application clearing the way for registration of the Applicant’s Mark.
Thirdly, Ms Hudson consciously decided not to attempt to satisfy the Registrar that she could register the Katy Perry Mark in class 25 for clothes by establishing, for example, honest concurrent use as she was invited to do. Rather she amended her application for registration of the Katy Perry Mark by removing class 25.
Fourthly, notwithstanding that she knew of the registration of the Applicant’s Mark and that the Katy Perry Mark was not registered in class 25, Ms Hudson (and the respondents) proceeded with the original plan to sell clothes bearing the Katy Perry Mark in Australia. They took a calculated risk in doing so. Their action was deliberate in the sense that they did not let the fact of the Applicant’s Mark stand in their way, but proceeded notwithstanding that obstacle. They were prepared to, and did, take a risk. Knowing their conduct was infringing conduct, they engaged in what can only be described as a “calculated disregard of [Ms Taylor’s] rights”: see Futuretronics.com.au Pty Ltd v Graphix Labels Pty Ltd (No 2) (2008) 76 IPR 763; [2008] FCA 746 at [19].
Fifthly, and on the other side of the ledger, the respondents submitted that their subjective intention in not intending to divert trade from Ms Taylor, because they believed that there was no risk of confusion, is relevant to a consideration of whether their conduct was flagrant. Mr Jensen’s evidence was that at various points in time, when recommending to Ms Hudson that she or any of the respondents enter into arrangements for sale of clothes bearing the Katy Perry Mark, including in Australia, he was not aware of any case of confusion that clothes bearing the Katy Perry Mark were Ms Taylor’s clothes or associated with Ms Taylor and it did not occur to him that any members of the public would be confused in that way. Had he held such a belief he would have acted differently and not recommended entry into the relevant arrangements.
That belief is in fact supported by a lack of evidence of confusion. It tells against the respondents acting in a deliberate or scandalous way but points to a belief on their part that there was in fact no confusion and thus no harm in their selling clothes bearing the Katy Perry Mark in Australia. It does not excuse their conduct but it ameliorates it in some way in that it demonstrates that there was no cynical pursuit of a benefit on their part.
Sixthly, and coupled with the preceding facts, the respondents submitted that Ms Taylor fails to recognise that, even without the Katy Perry Mark registered in class 25, they had a reasonably arguable defence to any alleged trade mark infringement based on the use of Ms Hudson’s name in good faith.
In Oxworks Trading Pty Ltd v Gram Engineering Pty Ltd (2019) 154 IPR 215; [2019] FCAFC 240, in the context of s 122(1A) of the Patents Act1990 (Cth), a Full Court of this Court (McKerracher, Burley and O’Bryan JJ) observed at [69] that “[t]he reasonableness of arguments as to why there was no infringement is a relevant factor to take into account in considering whether the infringement was ‘flagrant’”.
In Fuchs Lubricants (Australasia) Pty Ltd v Quaker Chemical (Australasia) Pty Ltd (2021) 284 FCR 174 at [405] a Full Court of this Court (Beach, Moshinsky and Thawley JJ) considered the question of additional damages, again under s 122(1A) of the Patents Act, and whether the primary judge erred in his approach to considering whether there should be such an award. There the primary judge refused to award additional damages because he considered that the appellant’s supply (which was the infringing conduct) was reasonably defensible because it “had a reasonably arguable defence to the allegation of infringement based on its construction of the claims of the patent”: at [382]. After referring to the decision in Oxworks and the evidence before the primary judge the Full Court found that there was no evidence to establish that Fuchs considered the patents to be invalid at the time of its supply or otherwise considered that it had a reasonably arguable defence to infringement at that time: at [401].
At [403] their Honours identified another difficulty with the primary judge’s reasons which justified setting them aside. That is, that his Honour focussed on the reasonableness of the defence in the proceeding before him as opposed to whether, at the time of the relevant infringing conduct, the appellant had a reasonably arguable defence which was relevant to its conduct and the question of whether an award of additional damages was appropriate. At [405] the Full Court relevantly said:
But in any event, the existence of a defence at trial is not what was seen in Oxworks (at [66]) as “a strong factor telling against award of additional damages” (cf [848]). As the reasoning in Oxworks shows, it is the state of mind of the infringer at the time of the infringement that is relevant in this context. Of course, the existence of a defence at trial may be another relevant factor, but at this point of his Honour’s reasons he was purporting to deal with Oxworks.
In this case, at trial, the respondents relied on, among others, the use of own name in good faith defence in s 122(1)(a) of the TM Act. That defence was made out by Ms Hudson and there was nothing to suggest that it was hopeless or ought not to have been pursued by the other respondents in the context of this proceeding. However, there was no evidence that Ms Hudson or anyone else, including Mr Jensen, held any belief that they had an arguable defence to infringement based on s 122(1)(a) or any other part of s 122 of the TM Act. To that end, there was some apparent confusion in the written submissions as to whether the respondents purported to hold their belief in relation to s 122(1)(a) or s 122(1)(e) of the TM Act. However, it matters not which as there was no evidence one way or the other about any state of mind at the time of the infringing conduct: Ms Hudson did not give evidence in the proceeding; Mr Jensen gave no evidence on the issue; the respondents led no evidence as to advice Ms Hudson received on this issue; and the respondents maintained a claim of legal professional privilege over documents which could well be relevant to establishing this assertion, which was upheld when challenged: see Taylor v Killer Queen, LLC (No 2) [2021] FCA 680.
Ms Taylor also complains that this submission: was raised for the first time in written closing submissions; was not referred to in opening; is not pleaded; and it would be unfair to her to permit the respondents to advance the submission now. That is because it is based on a state of mind, in turn, that must have been based on advice received. Yet the respondents have withheld the contents of that advice from her so that it could not be tested. That may all be correct; it is certainly correct that it is not pleaded and it seems that the argument was put for the first time in closing submissions. But I do not need to determine the matter on that basis because, as I have already observed, there is no evidence of the respondents’ understanding at the time of the infringing conduct. The respondents have simply not discharged their evidentiary onus and cannot establish that they believed they had an arguable defence at the relevant time.
Having regard to these factors, on balance, I am persuaded that the respondents’ infringing conduct was such as to attract an award of additional damages in relation to the infringing conduct that has been established.
5. The respondents’ application for non-publication orders
In the course of the hearing, upon the tender of certain documents exhibited to Mr Jensen’s affidavits, on the application of the respondents, I made interim orders preserving the confidentiality of particular documents pending determination of the respondents’ application pursuant to s 37AF of the Federal Court of Australia Act 1976 (Cth). That application is made in relation to documents which fall within the following categories:
(1)current commercial agreements and documents;
(2)sales sheets and figures for merchandise sold at various of Ms Hudson’s concerts performed in Australia, retail outlets and pop-up stores; and
(3)confidential lists of goods provided by the respondents to Ms Taylor.
5.1 Statutory framework and applicable principles
Section 37AF of the Federal Court Act provides:
(1)The Court may, by making a suppression order or non‑publication order on grounds permitted by this Part, prohibit or restrict the publication or other disclosure of:
…
(b) information that relates to a proceeding before the Court and is:
(i)information that comprises evidence or information about evidence; or
(ii)information obtained by the process of discovery; or
(iii)information produced under a subpoena; or
(iv)information lodged with or filed in the Court.
(2)The Court may make such orders as it thinks appropriate to give effect to an order under subsection (1).
The respondents seek their order on the basis of s 37AG(1)(a) of the Federal Court Act because it is necessary to prevent prejudice to the proper administration of justice.
A suppression or non-publication order operates for the period determined by the Court and specified in the order. In determining the period the Court is to ensure that the order operates for no longer than is reasonably necessary to achieve the purpose for which it is made: s 37AJ(2) of the Federal Court Act.
In Motorola Solutions, Inc. v Hytera Communications Corporation Ltd (No 2) [2018] FCA 17 at [6]-[9] Perram J summarised the principles to be applied upon an application for a suppression or non-publication order as follows:
6This Court has recently set out the principles to be applied when it is considering whether or not to make a suppression or non-publication order: Chief Executive Officer of Australian Transaction Reports and Analysis Centre v TAB Limited (No 4) [2017] FCA 1532 (‘CEO of AUSTRAC v TAB (No 4)’) at [9]-[12]. The present application does not call for any greater elaboration of those principles but they may be distilled as follows:
(1)the FCAA contains Part VAA which relates to suppression and non-publication orders;
(2)the power of the Court to make such orders is contained in s 37AF and the grounds for making them are to be found in s 37AG which includes within it that ‘the order is necessary to prevent prejudice to the proper administration of justice’: s 37AG(1)(a);
(3)such an order is not lightly to be made. It must be necessary to prevent prejudice to the proper administration of justice and not merely desirable: see Hogan v Australian Crime Commission [2010] HCA 21; (2010) 240 CLR 651 at 666 [39]; Australian Competition and Consumer Commission v Valve Corporation (No 5) [2016] FCA 741 at [8] per Edelman J;
(4)the Court may make any other order necessary to give effect to the primary order: s 37AF(2) of the FCAA.
(5)the order, once made, must remain in place no longer than is reasonably necessary to achieve its purpose: s 37AJ(2); and
(6)the Court must take into account that a primary objective of the administration of justice is to safeguard the public interest in open justice (s 37AE) but no balancing exercise need be carried out between the utility of the order and the interest which open justice assumes under the FCAA: Australian Competition and Consumer Commission v Air New Zealand (No 12) [2013] FCA 533 at [21].
7In CEO of AUSTRAC v TAB (No 4), the Court concluded that disclosure of the confidential information in that case would have undermined the purposes of the Anti-Money Laundering and Counter-Terrorism Financing Act 2006 (Cth) which was apt to prejudice the proper administration of justice. This was significant in the context of an Act of Parliament which had amongst its purposes the thwarting of terrorism financing.
8It might be thought that the mere protection of commercial-in-confidence information, which is essentially what Hytera seeks in this case, fits less comfortably within the statutory words ‘necessary to prevent prejudice to the proper administration of justice’. But this Court has held in a number of cases that commercial sensitivity can be an appropriate basis for making a suppression or non-publication order: ….
9There are cogent reasons for this which have variously been described in those cases, but they are generally associated with preserving the integrity of the litigious process, likely to be jeopardised if commercial competitors could benefit from court ordered production of trade secrets by parties to a suit. That said, it is important to recall that the order must be necessary to protect the administration of justice. It can readily be imagined that a carte blanche approach to applications for s 37AF orders for which commercial confidentiality is claimed as a basis, would jeopardise the interest the public has in being able to access court documents under the Federal Court Rules 2011 (Cth) or to engage meaningfully with reasons published by the Court. As I have explained at [6(6)] of these reasons above, the safeguarding of that interest as a primary objective of the administration of justice is a mandatory consideration for the Court. Particularly is that so in cases such as the present, where the Agreement, and its interpretation, may become a central plank in the ultimate resolution of the proceeding, and thus, to the intelligibility of future reasons delivered by the Court.
5.2 Category 1 – current commercial agreements and documents
Ms Taylor did not object to the respondents’ application for an order pursuant to s 37AF of the Federal Court Act in relation to the first category of documents: current commercial agreements and documents.
The respondents seek that order in relation to nine current commercial agreements and documents comprising: the agreement between Ms Hudson and DMG; documents relating to merchandise licensing arrangements with Epic Rights; the agreements relevant to the GBG joint venture; the agreement between Universal Music Group brands and Killer Queen in relation to the partnership with Pokémon; and the agreement between Bravado and retailer, H&M, dated 1 January 2016.
Mr Jensen gave evidence about these agreements and why there would be a risk of detriment to the respondents as well as other parties to those agreements if their confidentiality was not maintained:
(1)in the case of Ms Hudson’s agreement with DMG, Mr Jensen’s evidence is that the talent management business is a highly competitive industry and if DMG’s competitors became aware of confidential matters which are the subject of that agreement such as remuneration, royalty rates and other commercial terms they may seek to take advantage of that information at the expense of DMG;
(2)as for the balance of the agreements and documents, Mr Jensen’s evidence is that they comprise the commercial terms and conditions secured by DMG for Ms Hudson and her companies and contain confidential and personal information to the parties to those agreements. Some of the agreements include royalty rates for different territories and different trade channels for merchandise as well as provisions about procedures and accounting. There would be risk of detriment to the respondents, DMG as their manager and the counterparties to the agreements if the information in them was not kept confidential as it could be used by rivals who may seek to secure a relationship through arrangements which are more favourable than those the subject of the current agreements; and
(3)it is DMG’s practice to keep these types of agreements and documents confidential. Mr Jensen emphasises, in his dealings with DMG staff members, service providers and with the particular artist, their confidentiality and sensitivity.
I am satisfied that it is appropriate to protect the documents and agreements which fall within this category. They contain trade sensitive information and the maintenance of their confidentiality will preserve the integrity of the litigation process which could be jeopardised if commercial competitors could benefit from Court ordered production of material which is commercially sensitive to a party to the litigation.
The respondents seek the order until 31 December 2026. According to Mr Jensen that is because the confidentiality in these agreements “continues indefinitely given the long duration of relationships, including commercial relationships, in the entertainment industry”. An order made pursuant to s 37AF of the Federal Court Act must be necessary to protect the administration of justice and thus the period for which an order is to operate must be for no longer than is reasonably necessary to achieve the purpose for which it is made. Having regard to that requirement, I am satisfied, given the ongoing nature of these agreements and documents, that the order to be made should remain in force until 31 December 2026.
5.3 Category 2 – merchandise sales sheets and figures
The second category of documents is merchandise sales sheets and figures. There are seven documents in this category over which the respondents seek an order pursuant to s 37AF of the Federal Court Act. Ms Taylor opposes the making of an order in relation to this category.
Mr Jensen’s evidence is that, among other things, information in relation to “commercial returns and profitability of merchandise sales” are treated by him and DMG as sensitive, confidential and personal information of the artist and the manager and this is the case for Ms Hudson and DMG and is particularly so given Ms Hudson’s high profile. Mr Jensen also says that if documents such as these were not kept confidential he is concerned that:
(1)there would be adverse consequences for Ms Hudson;
(2)because of Ms Hudson’s high profile there is a potential for the media to use them (and other documents over which non-publication orders are sought) to criticise Ms Hudson and to convey an incorrect impression, which may exaggerate revenue and profits realised by her commercial arrangements, in circumstances where full information about Ms Hudson’s personal and financial affairs is not known and is private;
(3)this could result in negative publicity which could be detrimental to her career; and
(4)in the modern era with highly mobile communications and social media, such negative publicity can circulate widely in an uncontrolled manner and be highly negative for a popular figure, particularly one such as Ms Hudson who is so well known.
The respondents submitted that this category of documents, which records sales of merchandise sold through a variety of channels such as pop-up stores, retail outlets and at concerts, are confidential to and personal information of Ms Hudson and her associated entities, are not publicly available and are commercially sensitive. They contended that disclosure of them to their, DMG’s and the merchandise licensees’ competitors could adversely affect their commercial positions.
Ms Taylor submitted that Mr Jensen’s evidence as to potential damage by adverse media is speculative and in any event, this kind of damage is not relevant to the making of a non-publication order.
The documents in question record total sales at certain venues or through certain channels of sales over particular periods. In all cases, save one which records e-commerce sales from inception to 31 March 2021, the information is historical and records data from as far back as 2009 up to about 2016. Putting aside the document which includes more contemporary information, it is difficult to see how the historical data could be confidential in nature and how it could affect the respondents’, DMG’s or the merchandise licensees’ commercial positions, particularly where the evidence is that the respondents no longer deal with some of those merchandise licensees. Further Mr Jensen’s evidence as to adverse media attention is, as Ms Taylor submitted, purely speculative, and in any event, in the circumstances the risk of negative media attention and unfair media reporting is not a proper basis for an order pursuant to s 37AG(1)(a) of the Federal Court Act: see Jenkings v Northern Territory of Australia (No 4) [2021] FCA 839 at [66]-[70].
With one exception I decline to make an order pursuant to s 37AF(1) of the Federal Court Act in relation to this category of documents. The exception is the document which records information up to 31 March 2021 (court book, tab 24.16). It records more contemporary sales figures. Given its currency I accept that its contents are, as submitted, confidential and that its disclosure may damage the respondents and their merchandise licensees (who are likely to include current licensees) such that their commercial sensitivity should be protected for the purposes of preserving the integrity of the litigation process. I will make an order in relation to that document.
Once again the respondents seek the order until 31 December 2026 because of the long term relationships in the industry. However, as the document only records data up to 31 March 2021, in my view the purpose of the order will be achieved if it remains in place until 31 December 2023.
5.4 Category 3 – confidential lists of documents
The final category of documents comprises two lists of goods (court book, tabs 45 and 47). Those lists identify every item of Katy Perry branded merchandise and were brought into existence for the purposes of this proceeding and complying with Order 5(a) of the 12 November 2020 Orders. The first list of goods comprises 889 pages and provides a product number and description of the corresponding product and is arranged by calendar year. The second list of goods is a single page listing items described as “additional goods – May 2020 to March 2021”. Ms Taylor opposes the making of a non-publication order in relation to these documents.
Mr Jensen deposes that the respondents, licensees and DMG may suffer detriment if the lists of goods were available to commercial rivals because they may seek to use the information to benefit themselves and harm Ms Hudson’s interests in relation to her merchandise. Mr Jensen is also concerned that a rival merchandise company may seek to secure business from Ms Hudson or other artists to the detriment of the licensees who are now, and have been, involved and that a rival talent manager may seek to use the information with clients of DMG including with Ms Hudson to their advantage and to the disadvantage of DMG.
The respondents submitted that the lists of documents were compiled following a review of their confidential business records and contain commercially valuable material.
The lists of goods were compiled for this proceeding from the respondents’ business records. Ms Taylor suggested that they comprise publicly available information. That is only the case, to the extent one may be able to search websites and otherwise identify Katy Perry branded merchandise. The fact is that the lists of goods did not, prior to the proceeding, exist, and compiled in this form contain commercially sensitive information about the history of a large proportion of Katy Perry branded merchandise. Mr Jensen gives evidence about the detriment that could be suffered if confidentiality is not maintained in the lists of goods.
I am satisfied that in order to maintain the integrity of the litigation process an order pursuant to s 37AF of the Federal Court Act should be made in relation to these lists and that the order should be made until 31 December 2026. The order to be made will achieve its purpose if it remains in force until 31 December 2026 as sought by the respondents.
6. Disposition
I have concluded that Kitty Purry, as joint tortfeasor, has infringed the Applicant’s Mark in the ways set out at [583(2)] above. Declarations giving effect to that infringing conduct should be made and an injunction ordered.
Ms Taylor has otherwise failed to establish her claims of infringement.
The respondents have failed in their cross-claim and it should be dismissed.
The proceeding will be listed for case management hearing for the making of orders giving effect to these reasons and to permit further steps to be taken in relation to any subsequent hearing for the quantification of damages.
The parties should confer and provide my Associate with draft orders giving effect to these reasons within 14 days of their publication, including in relation to the question of costs. If the parties are unable to agree on the terms of proposed orders they should jointly provide a single marked up copy of the proposed orders showing where the parties agree and disagree on their proposed terms within the same time. The proceeding will be listed before me to hear argument on the form of orders, if necessary, as well as for case management as contemplated in the preceding paragraph.
At this stage, I will make orders giving effect to the procedure set out in the preceding two paragraphs, orders pursuant to s 37AF of the Federal Court Act in accordance with my findings above and in relation to their effect on the process for the publication of these reasons.
I certify that the preceding eight hundred and seventy-nine (879) numbered paragraphs are a true copy of the Reasons for Judgment of the Honourable Justice Markovic. Associate:
Dated: 21 April 2023
Annexure A
Annexure BSCHEDULE OF PARTIES
NSD 1774 of 2019 Respondents
Fourth Respondent:
PURRFECT VENTURES LLC
Cross-Claimants
Second Cross-Claimant:
KATHERYN ELIZABETH HUDSON
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