FEDERAL COURT OF AUSTRALIA

Taylor v Killer Queen, LLC (No 5) [2023] FCA 364

ORDERS

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

TABLE OF CONTENTS

REASONS FOR JUDGMENT

MARKOVIC J:

1    This is a tale of two women, two teenage dreams and one name.

2    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.

3    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.

4    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.

5    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.

6    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.

7    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

8    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.

9    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.

10    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.

11    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

12    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.

13    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.

14    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.

15    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.

16    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”.

17    In March 2015, following her marriage to Matthew Taylor, Ms Taylor changed her legal name to “Katie Jane Taylor”.

18    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.

19    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

20    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.

21    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.

22    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.

23    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.

24    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.

25    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.

26    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.

27    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”.

28    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.

29    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.

30    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.

31    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.

32    In October 2004 Ms Hudson was featured in an article titled “The Next Big Thing” in Blender magazine, a US music industry publication.

33    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.

34    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.

35    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”.

36    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

37    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.

38    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.

39    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

40    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.

41    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.

42    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.

43    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.

44    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.

45    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.

46    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.

47    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.

48    On 2 May 2007 Ms Taylor registered a domain name for her business at www.katieperry.com.au. Ms Taylor had originally wanted to register the domain name www.katieperry.com 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.

49    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.

50    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.

51    On 21 August 2007 Ms Taylor registered an email address, katie.perry7@gmail.com. In her business, Ms Taylor used that email address as well as two emails associated with her domain name: info@katieperry.com.au and katie@katieperry.com.au.

1.5    Ms Taylor makes her first application for registration of a trade mark

52    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.

53    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.

54    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

55    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:

56    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.

57    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

58    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.

59    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

60    Ms Hudson’s career was also developing.

61    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.

62    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.

63    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)).

64    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.

65    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.

66    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.

67    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.

68    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.

69    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.

70    On 8 April 2008 Ms Hudson performed the “Ur So Gay” single live on “Last Call with Carson Daly”, a US television variety program.

71    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.

72    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.

73    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.

74    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:

75    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”.

76    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.

77    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.

78    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.

79    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:

80    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.

81    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

82    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

83    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.

84    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.

85    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.

86    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.

87    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.

88    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.

89    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.

90    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.

91    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?

92    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

93    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

94    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.

1.9.1    Launch of the Katy Perry webstore

95    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.

96    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.

97    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:

98    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.

1.9.2    Initial arrangements with Bravado

99    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”.

100    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

101    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.

102    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.

103    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

104    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.

105    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.

106    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.

107    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.

108    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.

109    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

110    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.

111    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.

112    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.

113    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.

114    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:

115    On 16 May 2008 Ms Taylor received a letter of approval from Paddington Markets accepting her application for registration as a stallholder.

116    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:

117    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.

118    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.

119    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.

120    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.

121    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.

122    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 www.katieperry.com.au as taken from the Wayback Machine appears as follows:

123    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.

124    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.

125    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:

126    Since 2007 Ms Taylor has also actively posted on various social media platforms including Facebook and Instagram. Initially she promoted the “KATIE PERRY” brand on her personal Facebook page at https://www.facebook.com/katietaylor30. On 8 January 2009 she established a Facebook page for her business at https://www.facebook.com/katieperryclothing/. Ms Taylor continues to share and promote her brand through Facebook and now has a “shop” tab where people can view various items and access them by a link to her website. In about 2013 Ms Taylor also set up an Instagram account for her clothing brand at https://www.instagram.com/katieperry.clothing/. Ms Taylor usually tries to upload a post on Facebook or Instagram every few days. Extracts from the “KATIE PERRY” Facebook and Instagram pages, printed as at 8 June 2021, are as follows:

Facebook:

Instagram:

1.13    Ms Taylor first hears about Ms Hudson

127    Ms Taylor first heard of Ms Hudson in July 2008. She was listening to the radio and heard Ms Hudson’s name and her song “I Kissed a Girl”. Ms Taylor bought the song on iTunes because she wanted to support an artist who had the same name as her. At the time she did not intend to listen to the song and she does not recall that she did so often, if at all. Ms Hudson’s style of music was not to Ms Taylor’s liking and she has never bought any of her songs again.

128    Prior to June 2009, when she received the correspondence described below, Ms Taylor:

(1)    did not recall anyone ever mentioning Ms Hudson, her songs, her concerts or tours to her, whether or not with a reference to her own brand. But, in February 2021, in the course of reviewing documents for the purpose of this proceeding Ms Taylor found a Facebook post dated 20 October 2008 on her Facebook page about Ms Hudson. It was posted by Oscar Landa, a friend of Ms Taylor’s brother who Ms Taylor does not know well. A copy of the Facebook post, which Ms Taylor does not recall seeing prior to February 2021 and to which she did not respond, appears below:

(2)    had not considered, or even thought about, Ms Hudson as a potential threat to her business. To the extent Ms Taylor considered Ms Hudson at all, she has no recollection of thinking there would be any issues between them but she thinks it is more likely that she simply did not turn her mind to Ms Hudson at the time.

1.14    Mr Jensen becomes aware of Ms Taylor’s application for the Applicant’s Mark

129    In about May 2009 Mr Jensen became aware, from the US lawyers acting for Ms Hudson, of Ms Taylor’s application for registration of the Applicant’s Mark for “clothes” in Australia. Mr Jensen was concerned that Ms Taylor’s purpose may have been to attempt to obtain a financial advantage from Ms Hudson who, at that time, was scheduled to be in Australia as part of her world concert tour in August 2009.

1.15    Correspondence between Ms Hudson and Ms Taylor

130    In May 2009 Mr Jensen authorised the US lawyers for Ms Hudson, who acted on his instructions, to send a cease and desist letter to Ms Taylor in order to attempt to stop Ms Taylor’s application for registration of the Applicant’s Mark. Those lawyers, in turn, instructed Australian trade mark attorneys, Fisher Adams Kelly, to send the letter.

131    At some point in the period 5 to 8 June 2009, shortly after the launch of her showroom, Ms Taylor received a letter from Fisher Adams Kelly dated 21 May 2009 (21 May 2009 Letter). Ms Taylor recalls being surrounded by empty champagne glasses from the showroom launch party when she read it. The 21 May 2009 Letter, which was marked “without prejudice”, included:

We act for Katy Perry of XXXX (“Our Client”), born Katheryn Elizabeth Hudson is an internationally known American singer, songwriter and musician whose career commenced in 2001. In particular, Our Client rose to fame in 2007 with her internet hit “Ur So Gay” and with her international debut “I Kissed a Girl”.

An extract taken from the “Wikipedia” website, in respect of Our Client on 20 May 2009 is enclosed.

NB: The “Wikipedia” extract can be obtained by entering either “Katy Perry” or “Katie Perry”.

Legislation:

Sections 52 and 53 of the Trade Practices Act 1974 (Commonwealth) provide as follows:

…

Your Activities:

Any use, by yourself, or anyone authorized by you, of the trade mark “Katie Perry”, in respect of “clothes” (or other goods), is liable to mislead or deceive consumers into believing that the goods were manufactured by, or under the authority of, Our Client, (Section 52;) or that the goods have the “sponsorship, approval or affiliation” of Our Client (Paragraph 53 (d)).

NB: “Katie Perry” has identical appeal to the ear as “Katy Perry”: and the respective marks are “substantially identical” to the eye.

…

Undertakings:

Our Client, therefore, requires that you give the following written undertakings by the close of business on Friday 29 May 2009:

(1)    You will immediately withdraw Australian Trade Mark Application 1264761;

(2)    You will immediately withdraw from sale, clothes (or any other goods) bearing the “KATIE PERRY” trade mark;

(3)    You will immediately withdraw any advertising in relation to the “KATIE PERRY” trade mark, including withdrawing any websites or links thereto in respect to the KATIE PERRY trade mark; and

(4)    You will not, in the future, use any trade mark or name “substantially identical or deceptively similar to “KATIE PERRY” or “KATY PERRY”.

Your acceptance of the above Undertakings can be affected by executing the “Acceptance of Undertakings” on the duplicate copy of this letter and returning same to us by the deadline.

Should you fail to give the written Undertakings, Our Client shall be entitled to take any such action as is considered appropriate to protect her reputation, without further notice to yourself.

132    Ms Taylor recalls that she cried upon reading the 21 May 2009 Letter. She feared that she was going to lose everything she had worked so hard to build. She had never received a letter in that form from lawyers before and she thought they were going to take everything from her.

133    Ms Taylor was aware that another letter dated 8 May 2009 had been sent by Fisher Adams Kelly to her PO Box address which enclosed a notice of opposition to the registration of the Applicant’s Mark. However, the first letter Ms Taylor recalls reading was the 21 May 2009 Letter. Ms Taylor explained that she did not check her PO Box very often and when she did, she would open all the mail at once. She had picked up the 21 May 2009 Letter because it was distinctive as it was in a large express post envelope. Ms Taylor was also aware that Ms Hudson had filed an application for an extension of time to file the notice of opposition (Extension of Time Application) at the time that she filed the notice of opposition.

1.16    Events leading up to registration of the Applicant’s Mark

134    Ms Taylor arranged to meet with Justin Betar, a lawyer to whom she had been introduced. At the time she recalls that Mr Betar said words to her to the following effect:

You’ve got a really good case, but this is going to cost you $20,000 and unless you have $20,000 to fight this, you should shut up shop now.

Ms Taylor did not have that type of money to spend on legal fees and so did not engage Mr Betar.

135    Ms Taylor felt intimidated and distressed by the ordeal. The legal world was foreign to her and she found even speaking to a lawyer intimidating. She felt as though she was being bullied into signing everything away when she had not done anything wrong. She did not want to give up on her label, which she loved, and decided that she was not going to do so without a fight. Ms Taylor had applied for her trade marks because that was recommended to her in the courses that she had attended. She never had Ms Hudson in mind when she planned, or worked on, any aspect of her business or when she filed her trade mark applications. Ms Taylor took, and still takes pride in, her label being Australian owned and 100% made in Australia, which she felt was always a significant aspect of the brand’s identity and one of her biggest marketing points. Having her Australian brand associated with an American singer was not what she wanted and she did not consider it to be positive for her business.

136    Ms Taylor sought guidance from her business mentor, Graham Lawrence, about the 21 May 2009 Letter. He referred Ms Taylor to a journalist he knew at The Australian newspaper, Lara Sinclair. Ms Taylor thought that Ms Sinclair would be interested in her story because the 21 May 2009 Letter had been sent on behalf of Ms Hudson and because it was about a small business being “up against” a singer. On 16 June 2009 the following article authored by Ms Sinclair (Australian Article) was published in The Australian:

The Australian Article was also published on News.com.au, was picked up by a number of media outlets both in Australia and internationally and MTV News published an article based on it.

137    Ms Taylor purchased a copy of The Australian Newspaper which she retained. She said that she “skim read” Ms Sinclair’s article at the time of its publication and agreed that it was “highly likely” that she read those parts of the article to which she was taken in cross-examination including commentary from:

(1)    Trevor Choy, a trade mark lawyer, that “[f]ashion is a common area into which celebrities launch brands” and that “[a] lot of US popstars are moving into all sorts of merchandising, … [c]lothing is an obvious one for popstars”; and

(2)    Trish Nicol, a fashion publicist, that “the singer had a feminine fashion style that would lend itself to a label of her own”.

However, Ms Taylor did not accept that when she read those parts of the article she understood that it was likely that in the future Ms Hudson would sell clothing under her own KATY PERRY brand in Australia.

138    Despite that, Ms Taylor accepted that as at September 2008, prior to Ms Hudson travelling to Australia on her promotional tour, she likely knew that music artists sold clothing bearing their names at concerts. She said that she did not think about whether Ms Hudson would be selling clothing of that type at her concerts but, had she turned her mind to it, it would have been readily apparent that Ms Hudson would do so.

139    On 16 June 2009 Ms Taylor received an email with the subject “The trademark issue” from Caroline Thomson, who has since become a friend of Ms Taylor’s. Ms Thomson’s email of that date is lengthy but includes:

Hi Katie,

I am David Thomson’s partner, who you know from the NEIS course.

He has just shown me the news report on the legal issue with the trademark and Katy Perry.

I was so angry with what they have done, that I felt the need to write to you. I know David is also dropping you an email, as we both see it as so unfair and really want to let you know we support you and will do anything we can to help.

…

I noticed on the news websites that Katy Perry herself said back in March she was looking at launching her own clothes line. Hence, the whole objection to your trademark I guess and trying to intimidate you to stop trading.

Ms Taylor accepted that she would have read Ms Thomson’s email on receipt. So much is apparent from Ms Taylor’s response of the same date. Thus, at least from that time, Ms Taylor must have been aware of Ms Hudson’s intention to launch a clothing line.

140    The email exchanges between Ms Taylor and Ms Thomson continued. On 17 June 2009 Ms Thomson sent Ms Taylor an email in which Ms Thomson set out her thoughts on a proposal for a petition. The email concluded in the following way (as written):

I believe Katy Perry is meant to coming out here in August as well so it will be interesting to see what reception she gets after you get going missus!!! Go for it!

141    Once again Ms Taylor accepted that she read Ms Thomson’s email some time after receipt on 17 June 2009 and before she responded to it on 28 June 2009. Ms Taylor also accepted that from that time she knew that Ms Hudson would be touring Australia in August 2009 but she said that she did not know what the purpose of the tour was, i.e. as a concert tour or some other form of promotional tour, and she did not consider whether Ms Hudson would be selling promotional merchandise while in Australia.

142    Also on 16 June 2009 Ms Taylor sent out a newsletter with links to some of the articles that had been published. The newsletter included (as written):

For Katie,

I need your support!

My Australian owned and Australian made label is under threat.

Lawyers, acting for the US Popstar Katy Perry (real name Katheryn Hudson), are attempting to stop me trading under my real name.

See the articles below for the details.

USA Popstar against the Australian label.

Katy Perry vs KATIE PERRY

As you can imagine after all the hardwork and loce I had put into my label it’s very scary.

As you can imagine, after all the hardwork and love I had put into my label, this is all very scary. However, I am determined to fight for the right to use my long established name (although I refuse to let you in on the secret of my age......)

Please support me, and all small Australian businesses, in our efforts against the Goliath’s of this world.

Stay True,

Katie Perry

143    Holding Redlich Lawyers, the Australian lawyers acting for Ms Hudson at the time, sent a letter dated 15 June 2009 to Ms Taylor at her PO Box (15 June 2009 Letter). Ms Taylor does not recall when she read the 15 June 2009 Letter. It informed her that she had “wrongfully applied for trade mark application number 1264761 for the mark ‘Katie Perry’ in respect of goods and services in class 25 (the trade mark)” and that Ms Taylor’s application was “opposed by Ms Perry”. The 15 June 2009 Letter continued:

This letter gives you one final opportunity to correct your wrongful behaviour and to give up the trade mark you have applied for.

Failure by you to do this will result in the very serious consequences that we outline below.

The 15 June 2009 Letter went on to describe “Ms Katy Perry”, that is Ms Hudson, and what it referred to as Ms Taylor’s unlawful conduct and then set out a demand in the following terms:

Despite our client’s rights to take immediate action against you, she will allow you a final opportunity to remedy your wrongful conduct. Our client demands:

(a)    You immediately withdraw Australian trade mark application number 1264761;

(b)    You immediately provide us with confirmation in writing that you have withdrawn Australian trade mark application number 1264761;

(c)    You immediately undertake in writing that you will take all necessary steps to desist using the name “Katie Perry” in connection with clothes and other goods, including:

(i)    immediately withdrawing from sale, all clothes and other goods which bear the trade mark; and

(ii)    immediately withdrawing all forms of advertising which has been engaged by you in the promotion of the trade mark.

(d)    You immediately undertake in writing that you will refrain for all time from using the name “Katie Perry” or any other name or mark which is substantially identical or deceptively similar to “Katy Perry”.

Ms Taylor was informed that she had until 4 pm on Friday, 19 June 2009 to comply with the demand failing which Ms Hudson would commence a proceeding against her. A draft originating application to be filed in the Supreme Court of Queensland was enclosed.

144    In June 2009, Mr Jensen became aware of further information about Ms Taylor from Ms Hudson’s US lawyers. He understood that inquiries in Australia suggested that she was an Australian clothing designer with a small business designing loungewear for mature women under the name “Katie Perry” and that she had no connection to the music or entertainment industry. Mr Jensen also became aware of media stories relating to Ms Taylor, including the Australian Article, which he recalled reviewing at or shortly after the time they first appeared. No threat of legal action was made by Ms Taylor at the time.

145    The additional information which Mr Jensen received and the media in relation to the trade mark issue was the subject of an email exchange between Mr Jensen and Ms Hudson:

(1)    on 16 June 2009 Mr Jensen wrote:

We have learned that Katie Perry’s real name (the Australian fashion designer) is Katie Howell. She has ‘traded’ under the name of Katie Perry since 2007. Of course, this issue has been blown way out of proportion as we (you) have not tried to keep her from trading under her name, and have certainly not sued her for trademark infringement. This popped up as the lawyers were submitting applications for trademarking your name around the world, including Australia, and the system automatically submits an ‘objection’ if anyone is trading under your trademark or any trademark that is similar to Katy Perry ... and they do not have a registered trademark. Apparently, Katie Perry is not trademarked in Australia. This is a common practice, and just makes the lawyers (and us/you) aware of any potential conflicts so we can deal with them if necessary.

As is common in Australia, the tabloids have picked this up and made it into a ‘story’. We are arranging for some publicity (probably a press release) to clarify the situation, and want to have that in place by end of business tomorrow. We’ll keep you posted as we will probably want to include a statement from you. We’re on it!

In cross-examination Mr Jensen accepted that his statement made in his email to Ms Hudson that she had “not tried to keep [Ms Taylor] from trading under her name” was incorrect given the letters sent to Ms Taylor by Fisher Adams Kelly and Holding Redlich on Ms Hudson’s behalf; and

(2)    on 17 June 2009 Ms Hudson wrote (as written):

I say keep me outta it entirely... Make it less important but release something from management, pretty much stating the facts. Like from the opening of this email, beside the Katy, to the ‘story’ part. Those exact words are great. Don’t soften it up, don’t apologize, nothing. Let me know what’s going out before it does pls...

Stupid bitches.

I wouldn’t have even bothered with this mtv hadn’t picked up this silliness.

Dumb bitch! Rawr!

146    At that time Mr Jensen authorised Ms Hudson’s US lawyers to instruct her Australian lawyers to attempt to resolve the matter on the basis of a mutually satisfactory co-existence arrangement. Based on the information he had about Ms Taylor, Mr Jensen was less concerned that Ms Taylor’s purpose in pursuing her trade mark application was to obtain a financial advantage over Ms Hudson. He did not consider there was any likelihood that members of the public would confuse clothing and other merchandise branded with the name “Katy Perry” with clothes designed and manufactured by Ms Taylor. However, he thought it was possible that members of the public might confuse Ms Taylor’s clothes with clothes with “Katy Perry” on them and that, if this occurred, it would not adversely affect Ms Taylor but might benefit her because of Ms Hudson’s popularity in Australia.

147    On 16 June 2009 Ms Taylor received a call from Paul Venus, a lawyer at Holding Redlich. The following day, 17 June 2009, Ms Taylor received an email from Holding Redlich attaching a letter (17 June 2009 Letter). The 17 June 2009 Letter provided (omitting formal parts and as written):

Thank you for talking with Paul Venus on 16 June 2009.

Background

Why you were contacted

In that conversation Paul explained to you that you had received letters of demand because Ms Perry and her business associates had concerns that you were seeking to unfairly take advantage of Ms Perry’s reputation in order to benefit your business.

It was explained that often counterfeiters and pirate clothing companies attempt to wrongfully trade off the hard earned reputation of international rock stars.

You agreed with Paul that counterfeiters are criminals and understood that people would be upset about their conduct.

Your response

You explained to Paul that you are not a counterfeiter and that you do not have any desire to trade in such a way that would pass off your business as being associated with our client.

You explained that your business has been established in Australia since about February 2007. It sells lifestyle clothing to women between 30 and 50 years of age. Your clients have a high disposable income and you expect that many of them would not be aware of the music that is performed by our client. They are mostly located in the high income areas of North Sydney but you noted that you do sell from a shop in Mosman Sydney, on the internet and have one stockist.

You explained that the clothing is conservative and comfortable and that it is similar to the clothing sold by Calvin Klein.

You thought that an association between the image that our client has and the business that you have created would actually be detrimental to your brand positioning.

You said that you have taken legal advice but do not have a lawyer acting for you at the moment.

You also said that you had a friend who had mentioned your situation to a journalist at the Australian newspaper and that as a result you had given an interview to that newspaper. That article was published on page 7 of the Australian Newspaper on 16 June 2009.

Resolving the matters of concern

You have also told Paul that you do not wish to enter into a long and costly dispute with Ms Perry and wish to resolve matters amicably.

Paul Venus said that there may be a way forward to resolve the matter. You and he discussed possible resolutions and he said that he would ask his client for approval to put a proposal to you.

The remainder of this letter contains the proposal that our client is prepared to agree to resolve this matter.

If you agree, then please sign the letter where indicated below. Please then fax the signed letter back to us on fax number (07) 3135 0599.

Once you sign the letter and fax it back to us then a legal agreement will be completed.

Agreement for resolution

In consideration of the mutual promises set out below, the parties agree as follows:

Promises by Katie Howell

1.    You agree as follows:

(a)    You will immediately withdraw Australian trade mark application number 1264761;

(b)    You will provide us with confirmation in writing that you have withdrawn Australian trade mark application number 1264761;

(c)    You will not attempt to file, whether by your self or by an agent, employee or through and associated company or with someone you have an association with, any trade mark application for a trade mark which is substantially identical with or deceptively similar to the mark “Katy Perry”;

(d)    You will not oppose or in any way challenge any trade mark application for the mark “Katy Perry” which is made in Australia by Ms Katy Perry;

(e)    You undertake that you will:

(i)    Not represent that you have any association, affiliation, sponsorship or approval from Ms Katy Perry or anyone associated with her;

(ii)    Not sell any merchandise that is substantially identical with or deceptively similar to the merchandise which is sold using the “Katy Perry” name [to avoid misunderstanding this means merchandise similar to what is now sold by Katy Perry and does not stop you from selling the type of merchandise which you currently sell]; and

(iii)    Not engage in any forms of advertising which might cause confusion between your business and Katy Perry and her business interests.

Promises by Katy Perry

2.    We are authorised on behalf of Katy Perry and her business interests to promise that if you keep the promises that are set out above that she will not threaten to sue, or sue you for trade mark infringement, and will not take any other legal action against you.

148    Ms Taylor explained that, following publication of the Australian Article, the events the subject of it attracted significant media coverage. She received support from all around the world and, in particular, the Australian public, via calls, emails and online comments although, in cross-examination, she accepted the level of attention she received was due to Ms Hudson’s fame. On 17 June 2009, in the hope of obtaining suggestions, advice and help and to provide updates on the progress of the matter, Ms Taylor established a Facebook group called “Support for Australian designer Katie Perry” which is accessible at https://www.facebook.com/groups/117086615324. On 17 June 2009 Tom Kalikajaros, the husband of Ms Taylor’s manager from the time she worked at Oroton, added the following post:

149    Ms Taylor gave unsatisfactory and shifting evidence about her interaction with the posts made to the Facebook group she had established. First, she suggested that she did not read all of the posts and said that if she had not “liked” or commented on a post then she had not seen it. Then, upon further questioning, she accepted that, given the support coming from people joining the Facebook group, it was likely that she read the posts, that she does not recall reading all of them and that she must have read some.

150    For the following reasons I do not accept Ms Taylor’s evidence that she did not read all of the posts, including Mr Kalikajaros’ post set out above, added to the Facebook group page. First, Ms Taylor established the group for the very purpose of obtaining advice and help. In those circumstances it is inconceivable that she would not have read the posts to understand whether any advice or help was being offered. Secondly, in her evidence she said that “reading the supportive messages helped me to not give up” and she accepted this was a reference to, among other things, the messages posted on the Facebook group page. Thirdly and finally, on 26 June 2009 Ms Taylor posted a video to the group page thanking its members for their support. I do not accept that Ms Taylor would have posted a video to that effect unless she had read the messages that had been added to the page.

151    On 19 June 2009 Ms Taylor received an email from Mr Venus of Holding Redlich requesting that she call him. Ms Taylor recalls speaking to Mr Venus on or about that date in relation to the proposal set out in the 17 June 2009 Letter. She recalls they had a conversation to the following effect:

Mr Venus:    Have you read the letter I sent you?

Ms Taylor:    Yes, I have read it.

Mr Venus:    Are you going to agree to what’s proposed?

Ms Taylor:    I’m not going to agree to that. It needs to be fair, I’ve done nothing wrong.

Ms Taylor recalls that at that point in the conversation Mr Venus took on an aggressive tone and said:

You don’t know what the Americans are like and if you don’t agree to [the proposal], I’ll let the dogs out on you.

Following this conversation Ms Taylor felt more threatened and distressed.

152    During this period Ms Taylor was part of the Enterprise Network for Young Australians that provided access to funding, mentoring and education for young Australian entrepreneurs. On or about 22 June 2009 Ms Taylor sought the help of the Youth & Enterprise Legal Centre (YELC) which provides pro bono legal advice and services through the Enterprise Network for Young Australians. She was connected with Chris Hamilton, a lawyer with YELC, who commenced to act for her.

153    In the meantime, on 26 June 2009 Ms Hudson lodged an application for registration of KATY PERRY as a trade mark in Australia in classes 9, 25 and 41 (Ms Hudson’s TM Application). In relation to class 25 Ms Hudson’s TM Application was in respect of the following goods:

Apparel, namely, shirts, T-shirts, sweatshirts, sweat pants, jogging suits, gloves, sweaters, vests, skirts, dresses, shorts, pants, jackets, scarves, lingerie, boxers, underwear, robes, slippers, belts, hats, caps, visors, headwear and footwear.

154    On 29 June 2009 Ms Taylor posted a video message on her YouTube channel for Ms Hudson (29 June 2009 Video). She filmed the message with the Sydney Opera House in the background. She wanted Ms Hudson to watch the video as she believed that she had the power to stop her lawyers acting in the way they were and she wanted to stop Ms Hudson or her lawyers threatening her and, as she said in the video, “to leave [her] to carry on [her] dream that [she wanted]”. The 29 June 2009 Video is still able to be viewed on YouTube via the link https://www.youtube.com/watch?v=NQjDeSu21qE. Ms Taylor accepted that at the time she posted the 29 June 2009 Video she knew that Ms Hudson was planning to tour Australia in August 2009 and that it was likely that clothing featuring the Katy Perry Mark would be offered for sale at her concerts.

155    A transcript of the 29 June 2009 Video was in evidence. It is convenient to set it out here:

Transcript from YouTube video posted by Katie Perry on 29 June 2009 named “Katie Perry’s message to Katy Perry”.

https://www.youtube.com/watch?v=NQjDeSu21qE

[0:06]    Hi, I’m Katie Perry, the Australian Fashion designer, and this is a message to Katy Perry, the singer. This is the only way I know to contact you, so I hope that you do hear this.

[0:17]    I’m an Aussie girl, I’m doing my dream, I have my Australian made loungewear, percentage goes towards Australian charities, all made here in Australia. I’m absolutely no threat whatsoever to you.

[0:30]    I welcome you to come and visit my studio when you do come here for your concert in August. But at the moment the only people who are making any money from this are the lawyers. So I would love you to get in contact with me if you visit my website katieperry.com.au you’ll get an idea about my label and you’ll see that I’m absolutely no threat to you whatsoever and all of my contact details are there.

[0:54]    I would love to just hear from you and hopefully between the two of us we can sort something out. Because I can say at the moment, the only people making money from this are the lawyers. You’re a girl who has a dream just like myself, I wish you all the success, but leave me to carry on my dream that I want.

[1:10]    So Katy I look forward to hearing from you and I hope this reaches you. Thank you.

[1:14]     End of video

156    Ms Taylor was cross-examined about what she intended to convey by the 29 June 2009 Video. She did not accept that in stating that she was “absolutely no threat whatsoever to” Ms Hudson, wishing Ms Hudson “all the success” and requesting that she be left “to carry on my dream that I want”, she had intended to convey that Ms Hudson could use the Katy Perry Mark in relation to clothes. Ms Taylor maintained that what she intended to convey, particularly by the first of those statements, was that she was no threat because she was a fashion designer and Ms Hudson was a singer.

157    On 30 June 2009 Ms Taylor sent an email with a link to the 29 June 2009 Video to Mr Venus and on 3 July 2009 she posted a link to the 29 June 2009 Video on her blog with the following accompanying post (as written):

On Friday I was suggested to me that rather then sitting back and wait till the hearing I should take things in my own hands and contact Katy Perry myself.

I mean is that not how we should all be. If you have an issue confront the person and try to come to an understanding before or even without any lawyers involved. And so I filmed the video clip click here to view .

I had no idea how or if she would see it be figured by putting it on YouTube there was more chance that someone would pass it onto her.

I hope that in the future large corporations/lawyers will try first to come to a solution before using bullying tactics.

A few people have mentioned about the publicity aspect of this whole case. I can honestly say my label and I were expanding nicely before any of this had occurred and I would not wish it on any person to be put in the position to think they could lose their dream/passion/business all of which are my life (my friends can vouch for the fact its been a long time since I have seen any of them and yes I am very much in a relationship with my label!!!)

The main reason I continue to have coverage on this is for other small business owners to know to not give in and when something is not right stand up.

As it stands I wish for this to all end positively and hope that when Katy comes for her concert she can visit the studio.

Stay True,

Katie Perry xx

In cross-examination Ms Taylor said that by her blog post she intended to convey that she wished for her dispute with Ms Hudson to end positively for both of them and that she be allowed to continue to run her business. Ms Taylor did not accept that she intended to convey that she was happy for Ms Hudson to use the Katy Perry Mark as she pleased provided she could use the Applicant’s Mark as she wished.

158    Mr Jensen recalls that in late June 2009 he viewed the 29 June 2009 Video and that he saw Ms Taylor’s blog post which referred, and linked, to the 29 June 2009 Video.

159    On 5 July 2009 an article was published in the Sydney Morning Herald which includes:

But Ms Perry, from Kirribilli, says she is a victim of opportunistic lawyers. “I know this happens to a lot of other small businesses … There is no confusion between the two of us. I’m a designer and she’s a singer. As soon as anyone looked at the website [there would be no confusion],” she said.

…

Nor can she afford a costly court showdown, which led her to post an appeal to the singer on YouTube. The pop star has reportedly watched the video.

“I’m absolutely no threat to you,” Ms Perry says in the clip. “I welcome you to come visit my studio … But at the moment, the only people who are making any money from this are the lawyers.”

If left no choice, Ms Perry will travel to Canberra for Friday’s hearing, but hopes the matter will be settled beforehand.

“Her lawyers have [come] back to me wanting to have a more amicable settlement,” she said.

160    In cross-examination Mr Jensen accepted that after Ms Hudson’s TM Application was made, the strategy in relation to dealing with Ms Taylor changed and, rather than demand that Ms Taylor withdraw her application to register the Applicant’s Mark, a co-existence arrangement was proposed. The intention of that strategy was to enable Ms Hudson to register KATY PERRY in Australia as a trade mark. On 1 July 2009 Holding Redlich sent a letter to Ms Taylor marked “without prejudice” which offered to settle the dispute in that way. The letter included:

Katy has been informed of your business, has seen your video and understands that you and she do not compete with each other. She agrees that you also have a valid and ongoing business.

It therefore would seem that both parties have legitimate rights and that those rights can co-exist without conflict.

She would therefore like to resolve this matter in an amicable way.

Offer to settle

Ms Perry offers to resolve all issues on the following basis:

1    You keep Australian trade mark application number 1264761 and our client will agree not to oppose that application or use of your mark and to cease the current opposition process;

2    You agree not to oppose or challenge any use or trade mark application for the mark “Katy Perry” made in Australia by our client; and to provide, if so requested, a letter of consent in support of this co-existence;

3    You and Ms Perry mutually agree not to sue each other in respect to any claims, whether now or in the future, arising out of or in any way related to the use of the names “Katie Perry” or “Katy Perry”.

You and Katy have legitimate business interests and must be given the benefit of your respective business rights. Accordingly, our client believes that it is mutually beneficial to resolve the situation now in an amicable and constructive manner rather than by litigating.

I would be grateful if you would respond to this letter within 7 days.

161    On 8 July 2009 Ms Taylor received a draft deed of agreement from Holding Redlich. Later that day Mr Hamilton sent a further draft of the deed to Holding Redlich marked up with proposed amendments which Ms Taylor had instructed Mr Hamilton to make. Among other things:

(1)    the recitals to the draft deed included:

A    Ms Hudson is known world-wide under the name “Katy Perry” as a renowned singer-songwriter, performing and recording artist and entertainer. Ms. Hudson has also established a world-wide reputation for her distinctive fashion style and merchandise.

B    Ms Howell is a clothing designer from Sydney, Australia and the owner of a clothing retail business based in Sydney, Australia trading under the name “Katie Perry”.

(2)    clause 2 of the draft deed set out the terms of the proposed co-existence arrangement between Ms Taylor and Ms Hudson. Together with the amendments proposed by Ms Taylor it provided:

2.1    Ms Hudson agrees:

(a)    to withdraw the Notice of Opposition lodged in relation to the mark within 7 days of the date of execution of this Deed;

(b)    not to otherwise oppose or challenge the use or registration of the mark in Australia;

(c)    not to oppose or challenge any trade mark application for, or use by, Ms Howell of the words “Katie Perry” in relation to goods in class 25 - clothing, footwear, headgear (or the equivalent class in jurisdictions outside of Australia), in jurisdictions outside of Australia; and

(d)    to provide, within 14 days of receipt of a written request from Ms Howell, a letter of consent in support of the co-existence of the trade mark “Katie Perry”, and to take all other reasonable steps required by Ms Howell to obtain registration, provided such application is made in class 25 - clothing, footwear, headgear (or the equivalent class in jurisdictions outside of Australia).

2.2    Ms Howell agrees:

(a)    not to oppose or challenge, now or in the future, any application made by Ms Hudson to use or register as a trade mark the words “Katy Perry” in Australia;

(b)    not to oppose or challenge any use or trade mark application by Ms Hudson for the words “Katy Perry” in jurisdictions outside of Australia; and

(c)    to provide, within 14 days of receipt of a written request by or on behalf of Ms Hudson, a letter of consent in support of the co-existence of the trade mark “Katy Perry” in Australia and/or jurisdictions outside of Australia and to take all other reasonable steps required by Ms Hudson so that Ms Hudson can be in a position to obtain registration;

to refrain from, now and in the future, making derogatory comments in relation to “Katy Perry”, “Katheryn Hudson” or the dispute.

2.3    The parties agree that this Deed also binds any current and future transferees, licensees or assigns.

2.4    The parties agree to obtain written agreement from any current or future transferees, licensees or assigns that each of them is bound by the terms of this Deed.

(Mark-up in original.)

(3)    as is apparent at that time Ms Taylor only suggested two changes to cl 2 of the draft deed, with the principal amendment concerning deletion of a unilateral promise on the part of Ms Taylor not to disparage Ms Hudson. She was otherwise content with the terms of that clause; and

(4)    Ms Taylor also proposed an amendment to the draft deed by the addition of a new cl 3 in the following terms:

3    MUTUAL NON-DISPARAGEMENT

3.1    The parties agree not to disparage one another or make statements which would tend to cause damage to the personal or business reputation of the other.

(Mark-up in original.)

162    On 9 July 2009 Holding Redlich sent a further amended draft of the deed to Mr Hamilton. In that draft Holding Redlich on behalf of Ms Hudson proposed:

(1)    a single amendment to cl 2 by amending cl 2.1(d) to reflect cl 2.2(c) (see above) as follows:

(d)    to provide, within 14 days of receipt of a written request from Ms Howell, a letter of consent in support of the co-existence of the trade mark “Katie Perry”, and to take all other reasonable steps required by Ms Howell so that Ms Howell can be in a position to obtain registration, provided such application is made in class 25 - clothing, footwear, headgear (or the equivalent class in jurisdictions outside of Australia).

(Mark-up in original.)

That proposed amendment was of no concern to Ms Taylor; and

(2)    an amendment to cl 3 as proposed by Ms Taylor by adding a new cl 3.2 in the following terms:

3.2    The parties agree that the obligation in clause 3.1 does not prevent Ms Hudson from responding to media enquiries relating to statements made to the press by Ms Howell prior to the execution of this Deed.

(Mark up in original.)

163    On 9 July 2009 Mr Hamilton provided a further amended draft deed to Holding Redlich in which the following amendments were proposed:

(1)    in cl 1.1 the addition of the words “fair and reasonable” to the definition of “Disparage”;

(2)    the addition of the words “in a fair and reasonable manner” to the end of cl 3.2; and

(3)    the addition of a new cl 4.2(e).

164    By email sent on the morning of 10 July 2009 Toby Boys of Holding Redlich informed Mr Hamilton that Ms Hudson did not agree to the proposed amendments to the definition of “Disparage” and to cl 3.2 of the draft deed and circulated a further draft which sought to address the issue that arose in relation to those proposed amendments.

165    The Extension of Time Application was listed for hearing on 10 July 2009. Ms Taylor attended YELC’s offices with her mother that morning to finalise the deed and/or to listen in on the hearing by telephone. However, when Ms Taylor saw the most recent changes proposed to the draft deed she decided she would not sign it and the dispute did not settle. The hearing of the Extension of Time Application was adjourned by consent to 16 July 2009.

166    On 13 July 2009 Ms Taylor withdrew her instructions from YELC as she did not feel that her rights were being properly protected. She intended to represent herself and put up a post to that effect on Facebook following which she was contacted by a lot of people offering their support and advice. One of those people was Rebecca Dimaridis who referred Ms Taylor to her friend, Rebecca Stalenberg, a lawyer and trade mark attorney with Mark Your Territory. From 15 July 2009, Ms Stalenberg acted for Ms Taylor on a pro bono basis.

167    On 14 July 2009 Mr Venus sent an email to Elise Tenen-Aoki at Greenberg Traurig, Ms Hudson’s US lawyers, copied to Mr Thompson, which included under the heading “Trade Mark opposition hearing”:

Paul Thompson has advised in conference with you and I, that the application to extend the time to oppose [Ms Taylor’s] trade mark application will fail. In that circumstance, I recommend that Paul be asked to withdraw the application altogether.

In my opinion, there is no point running an application that will lose. The withdrawal of the application also does not limit the rights of our client to litigate the validity of the trade mark registration before a proper court of law.

Losing the application will further embolden [Ms Taylor], probably lead to more press coverage and make it harder to deal with her if that becomes necessary again. Withdrawing the application should take away [Ms Taylor’s] reason for complaint, in the short term and therefore limit the reason for press interest.

168    On 14 July 2009 at 9.30 am California time Ms Tenen-Aoki forwarded Mr Venus’ email to, among others, Mr Jensen. Her email included:

I think we should withdraw the application/extension request which is the subject of the hearing on Thursday. [Taylor] wants the attention and “pity” or support she is getting. I agree that withdrawing from the hearing and the opposition will take away her ability to play the victim.

169    By email dated 15 July 2009 marked as sent at 2.51 am Mr Jensen instructed Ms Tenen-Aoki that he was “fine with this strategy” and to “[p]lease move forward”.

170    It was agreed between the parties, pursuant to s 191 of the Evidence Act 1995 (Cth), that:

(1)    as at 14/15 July 2009 the time zone in Brisbane, Australia was AEST and the time zone in Irvine, California was PDT;

(2)    AEST is UTC +10 and PDT is UTC -7, being a 17 hour time difference; and

(3)    therefore when it was 2.51 am on 15 July 2009 in Brisbane, Australia it was 9.51 am on 14 July 2009 in Irvine, California, USA.

171    In cross-examination Mr Jensen accepted, on the assumption that California, USA was, as at 15 July 2009, 17 hours behind Australia, that his instructions to Ms Tenen-Aoki set out at [170] above were sent at 9.51 am on 14 July 2009, California time. The same conclusion must follow from the agreed facts recorded in the preceding paragraph.

172    On 15 July 2009 at 8.16 am Mr Venus sent an email to Ms Taylor which enclosed a letter from Holding Redlich (15 July 2009 Letter) with another offer to settle which was in the following terms:

1.    Each person will not oppose the other’s current trade mark applications in Australia.

2.    Each person will not challenge the use of the other person’s name on clothing in Australia [Katie Perry for Ms Howell and Katy Perry for Ms Hudson].

3.    Each person will, if requested by the other person, take all reasonable steps to help the other person obtain registration of their current trade mark application in Australia.

4.    Each person agrees not to disparage the other person.

5.    Both persons agree to keep the terms of this agreement confidential, other than as required by a law or than to disclose the fact that an amicable resolution has been reached between them.

Later that day, at 12.18 pm, Mr Venus forwarded the 15 July 2009 Letter to Ms Stalenberg by email.

173    Ms Taylor instructed her new lawyers, Mark Your Territory, to decline the offer in the 15 July 2009 Letter. By letter dated 15 July 2009 Ms Stalenberg informed Holding Redlich, among other things, that (as written):

I have now had the opportunity to review those documents and discuss that offer in detail with my client. While my client instructs me that she is still willing to enter into settlement negotiations in order to resolve the matter amicably for both parties, my client is concerned that the latest offer only relates to applications in Australia. In addition, I make the following comments as to the latest settlement offer:

…

2.    In order to be beneficial to my client, any settlement offer will need to at least address all territories that my client currently exports to, as well as those territories that my clients desires to enter into, in order to ensure that this dispute is fully resolved between the parties.

(Emphasis in original.)

174    In cross-examination Ms Taylor:

(1)    accepted that she did not instruct Ms Stalenberg that she had any concerns about Ms Hudson using or licensing the use of the Katy Perry Mark in relation to clothes in Australia. She acknowledged that, if she had a concern about Ms Hudson doing so, she would have instructed Ms Stalenberg to indicate that to Ms Hudson’s lawyers at the time;

(2)    accepted that at that time, i.e. in 2009, she understood that Ms Hudson was proposing to use or license the use of the Katy Perry Mark in relation to clothes in Australia, she had no concerns about that occurring and she never conveyed any different position to any of the respondents or their solicitors until her current solicitors’ letter of demand sent just prior to the commencement of this proceeding on 18 September 2019; and

(3)    attempted to explain her evidence set out at (2) above by stating that while, given the terms of the proposed settlement deed, she knew that Ms Hudson wanted to be able to use the Katy Perry Mark on clothes, that was not to say that Ms Hudson was going to sell clothes. Rather, Ms Hudson wanted to protect her brand. Ms Taylor said that her understanding as at 2009 was that Ms Hudson was not necessarily going to be selling clothes in Australia.

175    Mr Venus forwarded Ms Stalenberg’s letter to Ms Tenen-Aoki shortly after its receipt. The email by which he did so records the time it was sent as 10.29 pm on 14 July 2009 California time which, based on the agreed facts, is 3.29 pm on 15 July 2009 Brisbane time.

176    Although it appears to be disputed, it is apparent, given the time difference and the agreed facts about that topic, that Mr Jensen’s instructions to Ms Tenen-Aoki to withdraw the Extension of Time Application preceded the despatch by Mr Venus of the 15 July 2009 Letter. However, there is no evidence that Ms Tenen-Aoki conveyed Mr Jensen’s instructions to Mr Venus prior to despatch of that letter. The only evidence before me suggests the contrary. By email sent on 16 July 2009 at 8.20 am Ms Tenen-Aoki informed Messrs Venus and Thompson that (as written):

I just spoke with the client. They want to know how much this has cost so far and how much the hearing would cost. I need to wpeak with both of you again. The bad press issue is very upsetting. The client does not want to go through with the hearing.

That is, despite the exchange between Ms Tenen-Aoki and Mr Jensen set out at [168]-[169] above taking place before despatch of the 15 July 2009 Letter the instructions given by Mr Jensen and the strategy that was agreed at that time was not conveyed to Mr Venus and Mr Thompson until 16 July 2009 which was after despatch of the 15 July 2009 Letter.

177    On 16 July 2009 Ms Hudson withdrew the Extension of Time Application.

178    In his affidavit Mr Jensen gave evidence that in mid July 2009 he formed the view that Ms Hudson’s interests were best served by avoiding further publicity relating to Ms Taylor and by avoiding incurring unnecessary legal fees. Mr Jensen considered that the appropriate way forward was for Ms Hudson’s legal representatives not to appear at the hearing before the Australian Trade Marks Office scheduled to take place imminently. He arranged through the US lawyers for this to be done. In cross-examination Mr Jensen said that, in coming to this view, he took the legal advice he had received from Holding Redlich into account, including that it left open the possibility of litigating at a later point in time. He also understood that it was possible that Ms Taylor could complain about trade mark infringement on the part of Ms Hudson at a future point in time if Ms Hudson used the Katy Perry Mark on clothes, that Ms Taylor may contend that Ms Hudson infringed the Applicant’s Mark and that there was at least a risk that Ms Taylor could be successful in such an action given her earlier use of the Applicant’s Mark in Australia.

179    Mr Jensen understood that the result of the withdrawal of Ms Hudson’s Extension of Time Application was that Ms Taylor’s trade mark application would not be opposed and that the Applicant’s Mark would most likely be registered. He was not concerned by this because he did not consider there to be any likelihood that members of the public would confuse clothing and other merchandise bearing the “Katy Perry” name on it with Ms Taylor’s clothes. At that time Mr Jensen also understood that, based on Ms Stalenberg’s letter dated 15 July 2009 (see [173] above), it was possible that Ms Taylor might make contact again and considered it most likely that, if that were to happen, it would be when Ms Hudson was in Australia later in 2009 on her world concert tour.

180    From June to August 2009, during the period of negotiation with Ms Taylor, Mr Jensen kept Ms Hudson informed of his views about the matter and the actions he proposed to take and Ms Hudson approved of those actions. Mr Jensen recalls that in about mid July 2009 he had an exchange with Ms Hudson to the following effect:

Mr Jensen:    It will be better if we pull out of this and not go to this hearing which is going to run up legal bills and keep the media stories going. I am not concerned if we pull out and she registers her trade mark because the public would not confuse your Katy Perry branded tour merchandise with this lady’s clothes. We can see if this lady wants to negotiate and respond if she does. If we hear from her again, it will be when you are on your Australian tour.

Ms Hudson:    Steve, I agree with your thinking. It sounds like it’s best for us to just move on.

181    As set out below, Ms Hudson went on tour in Australia in August 2009 and KATY PERRY branded apparel and merchandise was sold at her concerts. Mr Jensen was not aware that there was any contact on behalf of Ms Taylor with Ms Hudson’s lawyers in Australia or the US at the time. This led Mr Jensen to believe there was no real likelihood of subsequent contact and at all times thereafter he proceeded on that basis. If action had been taken by Ms Taylor in 2009, Mr Jensen would have re-considered the actions taken, at that time and subsequently, to have KATY PERRY branded apparel sold in Australia at Ms Hudson’s concerts and in retail stores. Mr Jensen opined that:

(1)    if it had been necessary to re-consider those actions, that would have raised difficult and complex considerations;

(2)    based on his experience as a talent manager and in dealing with merchandise arrangements for music artists, given the nature of Ms Hudson as a popular international female music artist, it would have been detrimental to her success and popularity if she could not use her name in connection with branded clothing merchandise in a market as important to a music career as Australia; and

(3)    fans of a music artist such as Ms Hudson around the world, including in Australia, follow her music, public appearances and publicity about her in the US, Europe and other countries. They do so by accessing a range of television, radio and social media which is international. It would be very confusing if Ms Hudson’s fans in Australia were only able to be offered the purchase of merchandise with another brand that was different from KATY PERRY. If this were the case, many of the Australian fans would not want to buy merchandise without the artist’s name on it.

182    Mr Jensen was cross-examined about his views set out in the preceding paragraph. The following exchange took place between him and senior counsel for Ms Taylor, Mr Dimitriadis SC:

Mr Dimitriadis:    And it’s fair to say isn’t it, having read those paragraphs, that the key consideration in your mind that you refer to is that it would have been detrimental, in your view, 5 for Ms Hudson not to be able to use the trademark Katy Perry with a Y in connection with branded clothing merchandise in a market such as Australia. Is that right?

Mr Jensen:    Correct.

Mr Dimitriadis:    And that, doing the best that you can, would have been a very important consideration for you at the time in weighing this up?

Mr Jensen:    Correct.

Mr Dimitriadis:     Can I suggest to you, Mr Jensen, that in fact it’s quite clear to you now, attempting to put yourself back into the situation you were in in 2009, that if action had been taken by Ms Taylor in 2009 you would have recommended to Ms Hudson to continue with the actions that you took in 2009 and subsequently to have Katy Perry branded apparel sold in Australia. That’s right, isn’t it?

Mr Jensen:    ..... specific actions?

Mr Dimitriadis:    I’m saying the actions that you did in fact take?

Mr Jensen:    Yes.

Mr Dimitriadis:    Yes. In fact, it’s quite clear to you, isn’t it, Mr Jensen, that if action had been taken by Ms Taylor in 2009 you would have recommended to Ms Hudson to continue with the actions that you took in 2009 and subsequently to have Katy Perry branded apparel merchandise sold in Australia at her concerts and in retail stores. That’s right, isn’t it?

Mr Jensen:    Correct.

Mr Dimitriadis:    And it’s the case, isn’t it, that when Ms Taylor, through her lawyers, did commence an action in 2019, that is what occurred. In other words, Ms Hudson continued to sell Katy Perry branded merchandise, apparel merchandise, at least online, including into Australia; correct?

Mr Jensen:    Correct.

183    Further, in cross-examination Mr Jensen accepted that: the decision to proceed with the sale of KATY PERRY branded clothes while on tour in Australia in 2009 without having a co-existence arrangement in place was made knowing that the Applicant’s Mark would become registered; if the Applicant’s Mark was to become registered it would be possible for Ms Taylor to take action against Ms Hudson for trade mark infringement for sale of KATY PERRY branded clothes; and there was a risk that Ms Taylor could be successful in such an action. Mr Jensen agreed that the strategy adopted at the time involved Ms Hudson taking a calculated risk.

1.17    Registration of the Applicant’s Mark and Ms Taylor’s continued business operations

184    On 21 July 2009 the Applicant’s Mark was entered on the Register of Trade Marks and on 6 August 2009 its registration was advertised.

185    Ms Taylor received a lot of publicity during the period of her dispute about registration of the Applicant’s Mark and struggled to balance the publicity with running her business. Thus after the Applicant’s Mark had been registered she engaged Nicholas Karandonis and his firm Power PR to represent her brand. By email dated 23 June 2009 Mr Karandonis confirmed his firm’s retainer noting, among other things that:

It was wonderful meeting with you today. You are a delight and I am thrilled to be representing you and your brand.

As we discussed, I am happy to hereby give you a written guarantee that we will carry any pr fees owing for work we generate until such time as your business can afford to pay us. We will not source any publicity without your prior approval and we will at all times advise in advance, as to which media agencies we would like to approach on your behalf and will only do so with your permission. Additionally, we will handle any media you direct to us free-of-charge and we will waive our standard monthly disbursement fee of $220.

I will personally handle your account and am available to you as may be required. You have my mobile number and please feel free to use it. You are now in my phone, so recognizing your number, I will happily take your calls.

I am attaching our client profile which I’d like you to fill in when you can and return to me please as well as our standard letter of engagement (as well as our rate card) which I’d ask that you sign and fax back or I can collect any day on my way to work. …

186    In late July or early August 2009 Ms Taylor became aware that Ms Hudson was scheduled to visit Australia on a concert tour. On 6 August 2009 Mr Karandonis sent an email to Mr Venus suggesting that Ms Taylor and Ms Hudson hold a joint press conference at which Ms Taylor would give Ms Hudson some of her clothing as a peace offering or an exclusive with a major network program. Upon receiving a copy of Mr Karandonis’ email, Mr Jensen declined the suggestions in it.

187    According to Ms Taylor: Mr Karandonis suggested the joint press conference without first speaking with her; he forwarded the email exchange with Mr Venus to her the day after it was sent; given what Ms Hudson had put her through, she would never have given any of her clothing to Ms Hudson for free; if Ms Hudson liked her clothing she could buy it; she had been clear with Mr Karandonis that he was not to deal with anything to do with the trade mark dispute; and Ms Taylor did not want her clothes to be associated with Ms Hudson.

188    Ms Taylor’s evidence to that effect is not supported by the contemporaneous documentary evidence. In particular:

(1)    on 3 August 2009 Ms Taylor sent an email to Mr Karandonis in which she wrote (as written):

I hope you are had a lovely weekend. Have been thinking (which is always dangerous) that I think we need to go over future strategies and how exactly the wholesale agent part will work. I am in the process of making more items. Anyway let me know when you have some time this week.

PS Interested to know if you have heard back from the ‘other’ Katy Perry.

(2)    Mr Karandonis responded by email sent on 4 August 2009. Relevantly his response included:

We have approached evil Katy’s record label and heard nothing. Can you please email me her lawyers contact details and I will go direct.

(3)    in cross-examination Ms Taylor accepted that in response to Mr Karandonis’ request she provided him with Mr Venus’ email address.

189    In cross-examination Ms Taylor did not accept that the only reason Mr Karandonis requested Mr Venus’ email address was so that he could contact Mr Venus about the trade mark dispute between Ms Taylor and Ms Hudson and the proposal that there be a joint press conference. She said that Mr Karandonis could have been requesting Mr Venus’ email address and attempting to contact him about “anything” and that she did not know why he was contacting the lawyers. I reject that evidence. Given Mr Karandonis’ express representation in what appears to be his initial retainer email that he would not source any publicity without prior approval and the exchange of emails set out, I do not accept Ms Taylor’s protestations, made in cross-examination, that she was not involved in the strategy to seek a joint press conference with Ms Hudson and that she only knew of that strategy after Mr Karandonis had sent his email to Mr Venus. There simply could be no reason why Mr Karandonis would be requesting Mr Venus’ email address and then contacting him other than to discuss the 2009 trade mark dispute and the proposal for a joint press conference between Ms Taylor and Ms Hudson. I do not accept that Ms Taylor did not know about that proposal before it was put to Mr Venus.

190    That conclusion is also borne out by a subsequent media article which appeared in the daily publication MX on 13 August 2009 as follows:

191    In August 2009, after an interview with Ms Taylor, the following article appeared in WHO Magazine:

192    Ms Taylor became increasingly dissatisfied with Mr Karandonis after publication of the article in WHO Magazine. According to Ms Taylor, Mr Karandonis had told her that the article would be about her relationship with her mother and her fashion label but it was about the trade mark dispute, a topic with which she had explicitly requested he not deal. The payment arrangement between Ms Taylor and Power PR was such that Power PR would only be paid if it obtained publicity. Ms Taylor did not pay for the coverage in WHO Magazine as its content was not as promised, nor did she approve it. In about early 2010 Ms Taylor stopped working with Mr Karandonis and Power PR.

193    In November 2009 Ms Taylor was again nominated for the 2Threads Fashion awards in the “up and coming fashion designer” category. She did not receive the award but was honoured to be nominated for a second time.

1.18    The progress of Ms Hudson’s TM Application

194    On 10 September 2009 IP Australia informed Fisher Adams Kelly that it could not accept Ms Hudson’s TM Application. The adverse examination report which was issued set out the following reasons for not accepting the application:

Your trade mark is identical to or closely resembles the following earlier filed trade mark and is for similar goods or services:

1264761

•    Your trade mark KATY PERRY closely resembles the conflicting trade mark KATIE PERRY because the trade marks are visually very similar and phonetically identical.

AND

•    The goods you have claimed in class 25: ‘Apparel, namely, shirts, t-shirts, sweatshirts, sweat pants, jogging suits, gloves, sweaters, vests, skirts, dresses, shorts, pants, jackets, scarves, lingerie, boxers, underwear, robes, slippers, belts, hats, caps, visors, headwear and footwear’ are similar to goods claimed by the conflicting trade mark in class 25, these being: ‘Clothes’.

The report continued:

You can address this matter if you:

▪    Agree, in writing, to delete the following goods/services from your application:

Class 25: ‘Apparel, namely, shirts, t-shirts, sweatshirts, sweat pants, jogging suits, gloves, sweaters, vests, skirts, dresses, shorts, pants, jackets, scarves, lingerie, boxers, underwear, robes, slippers, belts, hats, caps, visors, headwear and footwear’

OR

•    Provide evidence of prior use, honest concurrent use and/or other circumstances.

195    Mr Jensen subsequently gave instructions for Ms Hudson’s TM Application to be withdrawn in class 25. Ms Hudson’s TM Application, as amended by removing class 25, was later accepted and on 7 November 2011 Australian trade mark application no. 1306481 for KATY PERRY was registered.

196    Ms Taylor was aware of Ms Hudson’s TM Application and that an adverse examination report was issued. Ms Taylor considered filing a notice of opposition or approaching Fisher Adams Kelly about it. However, she understood that Ms Hudson subsequently withdrew the application in class 25 removing the need for her to contest it.

197    As at 2009 Ms Taylor did not understand that Ms Hudson or any of her related entities was infringing or was going to infringe the Applicant’s Mark. Ms Taylor thought that Ms Hudson was a singer and that her industry was music and entertainment which she considered to be completely different to her own, being fashion, design and textiles. Ms Taylor did not think, during this period, that Ms Hudson would be marketing, making or selling clothes or other related goods in Australia under KATY PERRY or otherwise. Ms Taylor said that her thoughts were confirmed after finding out Ms Hudson had dropped class 25 in her trade mark application. She was not aware at the time that when Ms Hudson toured she was selling clothes.

198    In some ways, the evidence recorded in the preceding paragraph is difficult to accept. It is undermined by: Ms Taylor’s evidence given in cross-examination that, at the time she was negotiating the proposed co-existence agreement with Ms Hudson, she understood that Ms Hudson was proposing to use or license the use of the Katy Perry Mark on clothes in Australia and that she was not concerned about that (see [174] above); and the fact of those negotiations and the terms of the proposed settlement deed. However, the evidence, when considered holistically, also suggests, and I think the better view is, that Ms Taylor did hold that view during the course of the negotiations. But, after those negotiations failed, to resolve the trade mark dispute and once the Applicant’s Mark was registered and Ms Hudson’s TM Application was amended so as to exclude class 25 she considered that in fact Ms Hudson would not offer for sale or sell clothes bearing the Katy Perry Mark in Australia while on tour in 2009. Despite all of her attempts to gain publicity while Ms Hudson was on tour in Australia in August 2009, Ms Taylor maintained that she was not aware that at the time Ms Hudson was selling clothes bearing the Katy Perry Mark. Given my observation of Ms Taylor as somewhat naïve, this view of her evidence is completely plausible.

1.19    Ms Taylor and the KATIE PERRY label – 2010 to 2011

199    In 2010, 2012 and 2014 Ms Taylor applied for and received grants under the Textile, Clothing and Footwear Small Business Program. With the grant moneys Ms Taylor was able to create a new logo for her label and thereafter a new website, swing tags, labels and other promotional materials. The new logo is:

Ms Taylor continues to use this logo and a variation of it with the words “MADE IN AUSTRALIA” directly under it which appears as follows:

200    Throughout 2010 Ms Taylor attended numerous events to promote her label including the Fashion Forward Festival at Paddington Town Hall in May 2010 and Music Gallery event at Cottage Point, NSW in September 2010. In 2011 she also started to sell her clothes at the Mosman Markets and the Rocks Markets as well as continuing to do so at the Paddington Markets.

1.20    Ms Hudson’s career – 2009 to 2011

1.20.1    2009

201    From January to November 2009, following the release of her album “One of the Boys”, Ms Hudson embarked on a world concert tour, “The Katy Perry: The Hello Katy Tour”, performing across 20 countries. The Australian leg of the tour took place in August 2009 and included four shows performed in Brisbane, Sydney and Melbourne. “KATY PERRY” branded apparel and merchandise was sold at Ms Hudson’s concerts in Australia.

202    Over the period of The Hello Katy Tour:

(1)    on 13 May 2009 Ms Hudson performed her hit single “Waking Up in Vegas” on the television program “American Idol” in Los Angeles, USA;

(2)    on 23 August 2009 Ms Hudson performed her hit singles “Ur So Gay”, “One of the Boys”, “Hot n Cold” and “I Kissed a Girl” at the V Music Festival in Chelmsford, England;

(3)    on 14 September 2009 Ms Hudson attended the MTV Video Music Awards in New York, USA and was nominated for “Best Female Video” for her music video for “Hot n Cold”; and

(4)    on 5 November 2009 Ms Hudson hosted the MTV European Music Awards in Berlin, Germany.

1.20.2    2010

203    In the course of 2010 Ms Hudson appeared on, or performed at, the following shows or events:

(1)    on 26 January 2010 she appeared as a guest judge on television program “American Idol” in Los Angeles;

(2)    on 24 August 2010 she appeared on “The Late Show with David Letterman” in New York City where she performed her singles “Firework” and “Teenage Dream”;

(3)    on 27 August 2010 she performed her singles “California Gurls” and “Teenage Dream” at the Rockefeller Plaza for the “Today” program;

(4)    on 25 September 2010 she performed her single “California Gurls” and appeared on a comedy segment on NBC’s late night television show “Saturday Night Live”;

(5)    on 17 October 2010 she performed her single “Firework” on the “The X Factor” television program in London;

(6)    on 10 November 2010 she performed her singles “Teenage Dream”, “Hot n Cold” and “California Gurls” at the Victoria’s Secret fashion show in New York City; and

(7)    on 8 December 2010 she appeared on the US daytime television talk show “The Ellen DeGeneres Show”.

1.20.3    2011

204    On 10 February 2011, following the release of Ms Hudson’s album “Teenage Dream” and in anticipation of “Katy Perry: The California Dreams Tour”, Kitty Purry as grantor entered into an agreement with Bravado International Group Merchandising Services, Inc. in relation to the sale of KATY PERRY branded merchandise, including during The California Dreams Tour, and the grant of licence rights in relation to the “KATY PERRY” name and trade mark (2011 Bravado Agreement). The 2011 Bravado Agreement was signed by Ms Hudson as an authorised representative of Kitty Purry. KATY PERRY branded merchandise was sold by Bravado Merchandising on the Australian leg of the tour.

205    At the time of negotiating the 2011 Bravado Agreement, Mr Jensen considered whether it was in Ms Hudson’s interests. He believed that it was because it gave Ms Hudson a significant commercial opportunity in relation to KATY PERRY branded merchandise to be offered to the public in connection with her musical activities, both at concert venues and via e-commerce. Mr Jensen discussed the 2011 Bravado Agreement and its principal commercial terms with Ms Hudson before it was concluded and recommended to Ms Hudson that she and Kitty Purry enter into it.

206    Mr Jensen does not recall giving consideration to Ms Taylor at the time of making his recommendation to Ms Hudson and Kitty Purry to enter into the 2011 Bravado Agreement. There had been no contact from Ms Taylor since the events of 2009 and Ms Hudson had toured in Australia since that time. At the time, Mr Jensen was not aware of any cases of members of the public being confused that clothes with the “KATY PERRY” name and brand on them were Ms Taylor’s clothes or otherwise associated with Ms Taylor. It did not occur to Mr Jensen that there would be any possibility that the public would be confused in that way. Had Mr Jensen had any concerns that the public would be confused that the KATY PERRY branded merchandise to be produced and sold under the 2011 Bravado Agreement was Ms Taylor’s or otherwise associated with her, he would not have recommended to Ms Hudson and Kitty Purry that they conclude the 2011 Bravado Agreement. Mr Jensen had no such concerns.

207    From February 2011 to January 2012, following the release of her third studio album titled “Teenage Dream”, Ms Hudson embarked on The California Dreams Tour performing 124 shows across 21 countries. The Australian leg of the tour included eight shows performed in Melbourne, Adelaide, Sydney, Brisbane and Newcastle between 28 April 2011 and 15 May 2011. On 1 May 2011, while in Australia, Ms Hudson performed her single “Firework” at the “Logie Awards” ceremony in Melbourne.

208    In addition, in 2011 Ms Hudson:

(1)    won the award for best collaboration for her single “E.T.” at the “MTV Video Music Awards” in Los Angeles on 28 August 2011; and

(2)    performed her single “The One that Got Away” at the “American Music Awards” show held on 20 November 2011. At that time she was also awarded the “American Music Special Achievement Award” for her accomplishment as the first female artist to have five number one singles from one album.

1.21    Ms Taylor – 2012 to 2020

209    In 2012 Ms Taylor’s husband was transferred to Perth. As a result Ms Taylor gave up her Mosman showroom and her stalls at the various markets in Sydney from which she traded and moved to Perth. While there she held pop-up events which she described as “quite successful”.

210    In 2013 Ms Taylor and her husband moved back to Sydney. Ms Taylor opened a shop at 34 William Street, Paddington (Paddington shop) and attended various events including a VIP fashion and beauty event, a fashion parade for the Melbourne Cup and an event at Robert’s Restaurant in the Hunter Valley, NSW.

211    From 2013 to 2015 Ms Taylor also worked on board P&O Cruises cruise ships from time to time, presenting and showcasing clothing and judging runway shows.

212    In 2014 Ms Taylor held numerous events at her Paddington shop, launched her merino wool collection, launched a new service on her website for a personal styling service called “Style Me KP” and launched the “William St Collective” where different designers with products which were made in Australia shared a space in William Street, Paddington.

213    In 2015 Ms Taylor:

(1)    closed the Paddington shop;

(2)    was accepted as one of ten Australian designers to showcase at the “Common Threads” event in Hong Kong. Buyers from stores such as Harvey Nichols and other boutiques were able to view her collection;

(3)    launched “Your Fashion, Your Way” in Sydney and Perth where clients could customise the colour and fabrics for the pieces in her collection. This initiative was successful and Ms Taylor took the idea all around Australia; and

(4)    aside from her business, started working as a columnist writing monthly pieces for the Sydney Standard, a local paper, on fashion and style.

214    In 2016 Ms Taylor held numerous events in Sydney, Perth and Brisbane including a fashion parade and styling event at the Ken Duncan Gallery, pop-up stalls and “Your Fashion, Your Way” events. She also launched her current showroom in Glenmore Road, Paddington (Glenmore Road showroom).

215    In 2017 Ms Taylor started offering monogramming on merino wool. She held numerous events and launches at the Glenmore Road showroom and the “KATIE PERRY” label grew big enough to hire an in-house public relations and digital manager.

216    In 2018 Ms Taylor showcased the “KATIE PERRY” label at a charity event and launched the “Inspiring Women” campaign where she promoted women with their own businesses or who were making a difference in the world. Ms Taylor also presented, was a runway show judge, and showcased her label on a Carnival Cruise cruise ship for its Melbourne Cup Cruise.

217    In 2019 Ms Taylor continued to hold numerous events at the Glenmore Road showroom.

218    In 2020 Ms Taylor’s production house closed down due to the COVID-19 pandemic and she started to work with another production house. However, because of the restrictions imposed by the COVID-19 pandemic she could not hold events at or open the Glenmore Road showroom for much of the year. At the time Ms Taylor’s main focus was on her online store where she launched facemasks and her range of bamboo trousers. Ms Taylor also undertook a brand refresh with a new brand style guide, colours and packaging.

219    In 2021 Ms Taylor launched a new website with a new host. The landing page of the new website is reproduced below:

220    Throughout the period Ms Taylor continued to promote the “KATIE PERRY” label. In doing so, Ms Taylor maintained a Facebook page and a YouTube channel. Ms Taylor’s posts on that media included references to Ms Hudson:

(1)    on 9 February 2011 she posted an audio clip of presenter Ellie Mobbs from radio station 2DayFM mentioning her “Adelaide pants” when introducing Ms Hudson’s single “Teenage Dream”. Her accompanying message read:

Ellie Mobbs from 2day fm talk about Katie Perry Adelaide pants.

You can buy a pair at www.KatiePerry.com.au

(2)    on 17 May 2013 she posted an audio clip of an interview with Tim Rosso which aired on radio station Mix 106.5. Her accompanying message read:

Listen as Tim Rosso chats with Australian designer, Katie Perry and the very funny advert he creates just for her.

www.KatiePerry.com.au

The segment with Mr Rosso was called “Free ad Friday”. As part of the segment the presenters created an advertisement for the participant, in this case Ms Taylor and her KATIE PERRY label. The advertisement created for Ms Taylor, and other aspects of the interview, included references to Ms Hudson and puns based on the titles to Ms Hudson’s songs. In cross-examination Ms Taylor accepted that the whole of the audio clip was a discussion with the interviewer about her and Ms Hudson. While Ms Taylor did not accept that she was invited to participate in the segment because of her association with Ms Hudson it is clear, having regard to the transcript of the interview, that the entire focus of the interview, the “free ad” and the presenters’ interest in Ms Taylor was precisely because of the fact that the two women shared the same name, albeit with some differences in spelling;

(3)    on 3 July 2017 she added the following post to her Facebook page:

Heard my namesake Katy Perry is in town and wore an Alex Perry dress. Imagine if Katy Perry wore Katie Perry !!

In cross-examination Ms Taylor denied that in adding the post she was trying to promote her business by reference to Ms Hudson and said that “it’s just a statement” and that she was just being funny. But it is clear that Ms Taylor once again took the opportunity to obtain publicity for her label by reference to Ms Hudson. That is the only conceivable reason why she would create such a post on her Facebook page on which she promoted her own label.

1.22    Ms Hudson – 2012 to 2020

1.22.1    2012

221    In 2012 Ms Hudson performed and/or released the following singles:

(1)    on 12 February 2012 she attended and performed two songs at the 54th Annual Grammy Awards in Los Angeles. Ms Hudson’s single “Firework” from her third studio album “Teenage Dream” was nominated for a Grammy for “Record of the Year” and for “Best Pop Solo Performance”;

(2)    on 13 February 2012 she released the single “Part of Me” as the lead single from her “Teenage Dream: The Complete Confection” album. The single debuted at number one on the Billboard Top 100 Chart, the US Hot Digital Songs chart, the Canadian Hot 100 and the New Zealand Singles Chart. It was certified double platinum by ARIA;

(3)    on 31 March 2012 she performed her single “Part of Me” at the 2012 Kids’ Choice Awards in Los Angeles. Ms Hudson was nominated for a “Kids’ Choice Award” for “Favorite Female Singer” and her single “Firework” was nominated for “Favorite Song”. Ms Hudson won the Kids’ Choice Award for “Favourite Voice from an Animated Movie” for her performance as Smurfette in “The Smurfs” movie which was released in 2011; and

(4)    on 20 May 2012 she attended and performed her single “Wide Awake” for the first time at the 2012 Billboard Music Awards in Las Vegas. Ms Hudson was nominated for ten awards including “Top Female Artist”, “Top Hot 100 Artist”, “Top Hot 100 Song” and “Top Radio Songs Artist”. She won the “Spotlight Award” for being the second person (after Michael Jackson) and first female artist in music history to have five consecutive number one singles on “Billboard Hot 100” from one album.

1.22.2    2013

222    In 2013 Ms Hudson performed and/or released the following singles:

(1)    on 10 August 2013 Ms Hudson released the single “Roar” which placed at number one on the Billboard Hot 100 Chart. Ms Hudson performed “Roar” for the first time on 25 August 2013 at the MTV Video Music Awards in New York, and again on 28 October 2013 on the television program “The X Factor” in Sydney;

(2)    on 20 September 2013 Ms Hudson headlined the 2013 iHeartRadio Music Festival in Las Vegas performing an eight song set, including her singles “I Kissed a Girl” and “Firework”; and

(3)    on 29 October 2013 Ms Hudson performed two songs on Channel 7’s breakfast television show “Sunrise” at the Sydney Opera House in Sydney as part of the promotional tour for her new album “Prism”.

1.22.3    2014-2015

223    In 2014 Ms Hudson:

(1)    performed her new single “Dark Horse” at the British music awards show the Brit Awards in London on 19 February 2014; and

(2)    was invited by US President Barack Obama to perform her single “Roar” on 31 July 2014 at the White House for a surprise concert at a dinner honouring the Special Olympics.

224    On 6 February 2014, following the release in 2013 of her fourth studio album, “Prism” and in anticipation of Ms Hudson embarking on a global concert tour in support of that album, Kitty Purry as grantor entered into an agreement with Bravado Merchandising in relation to the sale of KATY PERRY branded merchandise including the grant of licence rights in relation to the “KATY PERRY” name and trade mark (2014 Bravado Agreement). The 2014 Bravado Agreement was signed by Ms Hudson as an authorised representative of Kitty Purry.

225    At the time of negotiating the 2014 Bravado Agreement Mr Jensen considered whether the 2014 Bravado Agreement was in Ms Hudson’s interest. He concluded that it was, as it presented her with a significant commercial opportunity in relation to KATY PERRY branded merchandise to be offered to the public in connection with her musical activities both at concert venues and through e-commerce. Prior to finalising the 2014 Bravado Agreement, Mr Jensen discussed it and its principal commercial terms with Ms Hudson and recommended that she and Kitty Purry conclude it.

226    Mr Jensen does not recall considering Ms Taylor at the time of making his recommendation that Ms Hudson finalise the 2014 Bravado Agreement. There had been no contact from Ms Taylor since the events of 2009 and Ms Hudson had since toured Australia in 2009 and again in 2011. Mr Jensen was not aware of any cases of members of the public being confused that clothes with the “KATY PERRY” name and brand on them were Ms Taylor’s clothes or otherwise associated with Ms Taylor. It did not occur to Mr Jensen that there would be any possibility that the public would be confused in that way. Had Mr Jensen had any concerns that the public would be confused that the KATY PERRY branded merchandise to be produced and sold under the 2014 Bravado Agreement was Ms Taylor’s or otherwise associated with her, he would not have made that recommendation. Mr Jensen had no such concerns.

227    From May 2014 to October 2015, Ms Hudson embarked on her world tour, “Katy Perry: The Prismatic World Tour”, performing 151 shows across 38 countries. On the Australian leg of the tour Ms Hudson performed 23 shows in Perth, Adelaide, Melbourne, Sydney and Brisbane in the period 7 November 2014 to 15 December 2014. KATY PERRY branded merchandise was sold at those shows.

228    In connection with The Prismatic Tour, Bravado operated “pop-up” stores selling “KATY PERRY” branded merchandise at Little Lonsdale Street, Melbourne between 12 and 18 November 2014 and at the Metro Theatre on George Street, Sydney between 21 and 28 November 2014.

229    On 1 February 2015 Ms Hudson performed at the Super Bowl XLIX halftime show in Phoenix, Arizona. Her performance was seen by 118.5 million viewers and was reported as the most-watched halftime show in history.

1.22.4    2016

230    In 2016 Ms Hudson appeared at the following events:

(1)    on 25 February 2016 she performed at the SAP Convention at Wailea Beach, Hawaii;

(2)    on 3 April 2016 she performed a medley of songs with country singer Dolly Parton at the 51st Academy of Country Music Awards in Las Vegas;

(3)    on 19 May 2016 she performed her singles “Roar”, “Teenage Dream”, “I Kissed a Girl” and “Firework” at the amfAR Cinema Against AIDS gala in France;

(4)    on 28 July 2016 she performed at the Democratic National Convention in Philadelphia; and

(5)    on 15 October 2016 she performed at the Children’s Hospital Los Angeles “Once Upon a Time” gala.

231    On 16 September 2016:

(1)    Killer Queen and Purrfect Ventures entered into an agreement pursuant to which Killer Queen granted to Purrfect Ventures an exclusive, non-transferrable worldwide licence, with the right to sub-license, to use the “Katy Perry Brand” in connection with “the development, design, manufacture, sale, marketing, distribution, promotion and/or advertising of approved Products … through permitted Channels of Distribution”; and

(2)    Killer Queen, Purrfect Ventures and GBG entered into an agreement. Mr Jensen, who was closely involved in the negotiation of this agreement, described it as a contract for the global licence of the “KATY PERRY” brand as a fashion brand in relation to certain product categories,

(together, Purrfect Ventures Agreements).

The product categories for the purposes of the Purrfect Ventures Agreements relevantly included shoes.

232    In addition to the Purrfect Ventures Agreements, on 1 December 2017 Ms Hudson, Killer Queen and Kitty Purry provided GBG with an acknowledgement, confirmation and consent letter relating to e-commerce and URL rights.

233    Mr Jensen gave the following evidence about the Purrfect Ventures Agreements:

(1)    by 2016 the “KATY PERRY” name and brand had appeared on clothing and other merchandise sold in Australia since 2009. To Mr Jensen’s knowledge, there had been no complaint by Ms Taylor about this and he was not aware of any cases of members of the public being confused that clothes and other merchandise with the “KATY PERRY” name and brand on them were clothes supplied by or otherwise associated with Ms Taylor. It did not occur to Mr Jensen that there would be any possibility that the public would be confused in that way;

(2)    after several discussions with Ms Hudson and meetings between them and representatives of GBG, including its design team, he recommended to Ms Hudson that she proceed to have Killer Queen and the other contracting parties, who were entities associated with Ms Hudson, enter into the Purrfect Ventures Agreements. Had Mr Jensen had any concerns that the public would be confused that the “KATY PERRY” branded merchandise to be sold pursuant to those agreements was Ms Taylor’s, he would not have made that recommendation. However, Mr Jensen had no such concerns; and

(3)    pursuant to the Purrfect Ventures Agreements, KATY PERRY branded fashion shoe collections and handbags are being sold in the channels and as permitted and approved under those agreements.

234    On 23 July 2021 Hudson Fund acquired GBG’s membership interest in Purrfect Ventures and, as described by Mr Jensen, in the “Purrfect Ventures venture” described at [231] above.

1.22.5    2017-2018

235    In 2017 Ms Hudson attended and/or performed at the following events:

(1)    on 5 March 2017 she performed at the iHeartRadio Music Awards in Los Angeles;

(2)    on 1 May 2017 she attended and performed at Vogue’s annual fundraising gala at the Metropolitan Museum of Art, the “Met Gala”, in New York City;

(3)    on 22 May 2017 she appeared on CBS’ television talk show “The Late Late Show with James Corden” in the Carpool Karaoke Primetime Special segment in Los Angeles;

(4)    on 4 June 2017 she performed at the “One Love Manchester” benefit concert in Manchester, England in response to the suicide bombing carried out in May 2017 at Ariana Grande’s Manchester Arena concert;

(5)    on 24 June 2017 she performed a 14 song set at the Glastonbury Festival in Somerset, England;

(6)    on 30 June 2017 she made an in-store appearance at a Myer department store in Sydney to promote the “KATY PERRY” branded shoe range; and

(7)    on 2 July 2017 she appeared and performed on the talent show “The Voice” in Sydney.

236    On 22 June 2017 Myer Pty Ltd and TEG Dainty Pty Ltd entered into a sponsorship agreement relating to “Katy Perry”. Pursuant to that agreement Myer was granted “the right to be the sole and exclusive principal and naming rights partner of the [Witness] Tour”. It provided for advertising and promotion by Myer and personal appearances by Ms Hudson including an in-store appearance to announce the Australian concert dates for the upcoming “Witness: the Tour” concert tour and to promote the KATY PERRY branded shoe range. The sponsorship agreement was amended by a sponsorship amending agreement dated 25 July 2018 between Myer and TEG Dainty.

237    By letter dated 11 October 2017 Mr Donnell, who had left Bravado in 2016 and was at the time with a company identified as “Blackout Merch”, proposed a “revised merchandising offer” for Ms Hudson for “Exclusive Tour, Wholesale, E-Commerce, & Non-exclusive Licensing” (October 2017 Letter). As far as Mr Jensen can recall there was no formal contract between DMG and Blackout Merch in relation to KATY PERRY branded merchandise and, for the commercial merchandising activities referred to in the October 2017 Letter and in a subsequent email exchange between Messrs Donnell and Jensen between 9 and 11 April 2018, the parties conducted themselves generally in accordance with those documents (which I will refer to together as the Blackout Merch Agreement).