2 April 2021
What you need to know
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State Street, the US finance company that commissioned the creation of the New York "Fearless Girl" statue, failed in its claims against Australian law firm, Maurice Blackburn, to prevent Maurice Blackburn using and promoting a replica of the "Fearless Girl" statue in Australia.
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State Street made claims of trade mark infringement, copyright infringement, misleading or deceptive conduct and passing off and inducing breach of contract.
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The key reason that State Street's claims failed was because its "exclusive rights" in relation to the "Fearless Girl" statue did not extend to the acts undertaken by Maurice Blackburn.
What you need to do
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When negotiating the scope of licence rights, ensure that you not only consider the scope of rights your organisation wants to retain but also what your organisation would not want other parties to use.
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If the rights that you negotiate are not as broad as you would like, be aware that, as stated by Justice Beach, "Australian statute law and tort law cannot fill that gap".
The "Fearless Girl" statue
In 2016 a bronze statue of a life-size girl was created by Ms Kristen Visbal (the artist) and currently stands in front of the New York Stock Exchange. The statue is known as the "Fearless Girl". The statue was commissioned by State Street Global Advisors Trust Company (State Street), a US company, to be a symbol of State Street's initiatives about gender diversity in corporate governance and the financial services sector. The statue was extensively promoted and State Street asserted that it had a significant impact on improving gender diversity in corporate businesses.
In 2019, Maurice Blackburn, an Australian law firm (MB), commissioned the artist to create a replica of the "Fearless Girl" statue for an Australian workplace gender equality campaign. State Street (and its Australian subsidiary) alleged that MB infringed its rights in the statue by doing so. In particular, it alleged that MB engaged in misleading or deceptive conduct, trade mark infringement, copyright infringement and various tort claims including passing off and inducing breach of contract.
The Federal Court found that State Street failed on all of its claims.
Inducing breach of contract
State Street argued that its agreement with the artist gives it the exclusive right to use the statue and the "Fearless Girl" trade mark in relation to promoting gender diversity in corporate governance and in the financial services sector. State Street argued that MB induced or procured the artist to enter an agreement to provide a replica of the statue in circumstances where MB was wilfully blind or recklessly indifferent to the fact that this would cause the artist to breach her agreement with State Street and induced or procured the artist to participate in the launch event for the Australian "Fearless Girl" statue which State Street asserted would also result in the artist breaching her obligations.
Justice Beach found that MB did not have the relevant state of mind to make out this tort and that the underlying foundation was not made out (ie, the artist did not breach the terms of her agreement with State Street by entering into an agreement with MB and participating in the launch event). Justice Beach concluded that at the time MB entered into its agreement with the artist, MB did not have any actual knowledge of the possibility of a breach by the artist of her agreement with State Street, nor was MB wilfully blind or recklessly indifferent to the risk of a breach. On this point, Justice Beach noted that the artist's lawyers represented in discussions with MB that the artist entering into an agreement with MB would not infringe on any of the artist's obligations under its agreement with State Street. In relation to the launch event, Justice Beach found that the evidence demonstrated that the artist herself chose to participate in the launch event at her own expense and was not induced to do so by MB.
Misleading or deceptive conduct and passing off
State Street alleged that MB falsely represented to the public that the replica "Fearless Girl" statue was in fact the New York "Fearless Girl" statue, was associated with State Street or its gender diversity initiatives and was promoted and installed with the permission of State Street, and that MB itself was associated with the New York statue and State Street. MB denied these allegations and said that it used wording in its materials that made it clear that the replica was just that and was in no way associated with the New York statue or State Street.
Justice Beach found that these claims were not made out because it was apparent that the replica statue was not being represented by MB as the New York statue itself and there was no reference made to any association with State Street. It was also relevant that State Street and its Australian subsidiary could not demonstrate that they had a reputation in Australia at the relevant time.
Trade mark infringement
State Street owns a trade mark registration for the word mark FEARLESS GIRL in classes 35 (publicity services) and 36 (financial services). State Street alleged that MB infringed its registered trade mark by itself using, and authorising the use by others of, the words "Fearless Girl" in relation to class 35 and 36 services.
Justice Beach dismissed this allegation on the basis that MB did not use the words "Fearless Girl" as a trade mark, rather they were used to describe the replica statue which was appropriate. Justice Beach also found that the "Fearless Girl" trade mark was not used by MB in relation to the offering of the relevant class 35 and 36 services.
Further, Justice Beach stated that MB established the defence under s 122(1)(b)(i) of the Trade Marks Act because it was using the name "Fearless Girl" in good faith to indicate a characteristic of the goods, being the name of the artwork.
Copyright infringement
The artist retained copyright in the "Fearless Girl" statue, including the right to create and distribute replicas. However, the artist granted State Street an exclusive licence of two and artist-authorised three dimensional copies of the statue to promote gender diversity issues in corporate governance and in the financial service sector, and in connection with State Street and its services.
MB admitted that it undertook acts that resulted in a reproduction or communication to the public of a substantial part of the copyright work including by posting an image of the "Fearless Girl" statue on its Instagram page, in a tweet on Twitter, in a LinkedIn post and on invitations for the launch event. However MB argued that this conduct did not amount to infringement because the acts were outside the scope of the rights held by State Street.
Justice Beach agreed with MB that MB did not infringe copyright in the work because the acts done by MB were not within the scope of State Street's exclusive rights. State Street's rights in relation to the statue were limited to acts does in connection with gender diversity issues in corporate governance and in the financial services sector. Justice Beach found that the uses of the two dimensional reproductions of the "Fearless Girl" statue made by MB did not refer to gender diversity issues in corporate governance or the financial services sector. Rather MB's campaign was much more broadly focused on gender equality and not limited in any way to the financial services sector.
Similarly, State Street's allegations that MB authorised copyright infringement by other parties were dismissed on the basis that they also did not fall with State Street's exclusive licence rights. While two of the entities involved MB's gender equality campaign, CBUS and HESTA, are superannuation funds, Justice Beach stated that the presence of those companies cannot by itself make any reproduction associated with financial services. The authorisation of infringement claims made by State Street were also dismissed.
