The Intellectual Property that Wasn’t Theirs
Famous Trademark Cases - And What We Can Learn From Them
Intellectual property is something you need to get your head around if you’re a business owner.
When you do, you might find that you’re set and good to go. But you might find that you’re not, and if that’s the case, you’ve got some work to do on this front.
The first thing you need to get your head around is:
What can be trademarked, and
What can’t be trademarked.
You can read more about this in my blog Trademarks and Copyright: Is it Really Yours?
Then, if it is important to your business that you have exclusive use over your name or a phrase (such as a tagline, course name etc), then you need to put the pedal to the metal and get cracking to get the protection you need.
Let’s look at some famous trademark cases that illustrate what can go wrong if you don’t have exclusive rights to the IP you’re using, or if you use someone else’s IP without the right permissions.
Katie, Kylie, Guns and Roses
Katie Perry vs Katy Perry
The showdown between Australian fashion designer Katie Perry (now Katie Taylor) and US singer Katy Perry involves 12 years, numerous letters, and counterclaims.
Katherine Hudson started performing under the stage name Katy Perry in 2004. Katie Perry claims she has been trading under the name since 2006, and registered “Katie Perry” as a trademark in Australia in 2008.
It’s sticky already, isn’t it?
The singer opposed the trademark registration in 2009, and filed cease and desist letters against the designer. A hearing was scheduled, but the singer withdrew her opposition 2 hours before it was to go ahead.
One is a singer, and one is a clothing designer, so much like Apple Records and Apple Computers back in the day, there should be no problem, right?
Wrong. Just like Apple Computers branched out to include music, of course Katy Perry sells apparel and clothing branded with her name.
Ten (yes, TEN) years later, in 2019, Taylor commenced legal proceedings against Perry, claiming that she has knowingly been using a name that was similar enough to cause confusion with her trademarked name. And then Perry filed a cross-claim against Taylor, alleging that people might be led to believe that the singer was associated with the fashion brand.
The case goes on—and on, and on. It’s been 12 years since the first legal letters were sent.
Kylie vs Kylie
The trademark KYLIE has been the catalyst for a battle between Australian pop star Kylie Minogue and US reality TV star Kylie Jenner. They both had cosmetic lines, and both were called Kylie.
Minogue fired the first shots in 2016, arguing that she had been using the name since before Jenner was born.
Fortunately, they were able to settle out of court. The exact details aren’t publicly known, but it’s suspected it worked in Minogue’s favour.
Guns N’ Roses vs Texas Guns and Roses
This one seems a lot more deliberate than the others: a Texas firearms store that also sells floral arrangements has found itself in the firing line of Guns N’ Roses, the rock band that formed in 1985.
But it’s not just the name, which is—to put it mildly—VERY similar. It’s likely there are plenty of people out there using this combination of words and letters who aren’t being sued by Axl Rose.
The band are concerned that the political stance taken by the shop and on its website is too polarising, and not the stance taken by the band themselves. They don’t want to be associated with it.
This one is breaking as I write, so no outcome has yet been reached. But it does illustrate a good many of the things that can go wrong with trademark cases: in sentiment, just as much as words.
The Trademark Takeaways
The takeaway from these famous cases is how vital it is to assess your business, whether it is important to your business to have exclusive rights to, and use of, your business name or tag line (or course name, podcast name, or anything else).
If it is important to your business—as we’ve seen, regardless of whether this is your own name—then you need to take the time to understand whether it is trademarkable. If it is, take steps to trademark the name or phrase properly. It’ll do you no good to take shortcuts here only to find out later that you didn’t file in the right class, or classes, and you’ve left yourself exposed.
It’s not a straightforward process. If you end up going down the rabbit hole of trademarks via the IP Australia website all on your lonesome, you may find that you become easily derailed and end up with no trademark, or with a trademark in the wrong class (or not enough classes) for what you do in your business.
Want a Masterclass in Trademarks?
Then Masterclass #5 in The Legally Empowered Entrepreneur Series, Trademarks: What You Need To Know Before You Apply is for you! Grab it here.
And for business owners who want the low-down on small business legals, check out our more comprehensive guide: Legal Advice for Small Business | Ultimate Guide.
Are you looking for a way out of the rabbit hole? Book a free chat.
