State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 2) [2021] FCA 137; State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 3) [2021] FCA 568; 159 IPR 281

Behind a Christmas installation at the top end of Melbourne’s Federation Square stands a replica of the Fearless Girl statue installed opposite the New York Stock Exchange. The replica, like the original, stands as a symbol for workplace gender diversity. The replica is not accompanied by any plaque that would reveal the message which the statue was commissioned to convey. Ironically, this is the doing of the US wealth management firm which commissioned the original statue, State Street Global Advisors Trust Company (State Street) and its local subsidiary State Street Global Advisors Australia Limited (SSGA).

Summary

  • State Street and SSGA commenced proceedings in 2019 against Maurice Blackburn Lawyers and superannuation funds HESTA and Cbus seeking to limit their licenced use of the replica.

  • The applicants claimed that the respondents’ various uses of the iconic statue and its title, “Fearless Girl”, breached copyright, trademark and the Australian Consumer Law and constituted the common law torts of passing off and interference with contractual relations between the statue’s artist and the first plaintiff.

  • Justice Beach rejected the claim, remarking, at paragraph 23 of the principal decision:

Generally, SSGA has sought to weave its web of statutory and tort claims in such a fashion as to effectively assert monopoly rights in an icon that it does not have.  There is considerable disparity between what it paid for and what it now asserts it is entitled to protect.  But Australian statute law and tort law cannot fill that gap.

Background

In 2016, State Street commissioned artist Kristen Visbal to produce the Fearless Girl statue, which on 7 March 2017 was installed in front of Wall Street’s famous Charging Bull statue as a symbol for gender equality. The agreement between Ms Visbal and State Street for the display and use of the statue was signed in May 2017 (Master Agreement) and contained terms that limited the artist’s rights and granted State Street various rights in relation to the finance industry and gender diversity issues in corporate governance.

On 6 February 2019, Maurice Blackburn entered into a licence agreement with Ms Visbal to purchase and use a limited-edition replica of the Fearless Girl for an Australian campaign concerning workplace gender equality, including equal pay for women. HESTA and Cbus, who eventually settled the claims brought against them, joined Maurice Blackburn’s equality campaign and invitations were sent out on 12 February 2019 for an event to launch the public unveiling of the replica at ZINC, an events venue at Federation Square in Melbourne’s CBD, on 26 February 2019, 10 days before International Women’s Day on 8 March 2019.

On 14 February 2019 State Street and SSGA commenced proceedings against Maurice Blackburn, HESTA and Cbus which included an application for interlocutory injunction. The injunction was refused and the replica statue was unveiled at ZINC on 26 February 2019. Thereafter the defendants paid for two advertisements displaying images of the replica: the first was a wrap-around cover published in the Herald Sun on 2 March 2019 and the second a full-page advertisement for the campaign published in Stellar magazine on 10 March 2019. The defendants also made various publications in relation to the statue on social media.

Claims

The plaintiffs made various statutory claims that Maurice Blackburn by its conduct engaged in misleading or deceptive conduct contrary to ss 18 and 29(1)(a), (g) and (h) of the Australian Consumer Law (ACL) (schedule 2 to the Competition and Consumer Act 2010 (Cth)), trade mark infringement contrary to ss 120(1) and (2) of the Trade Marks Act 1995 (Cth) (Trade Marks Act), and infringement of copyright contrary to s 36 of the Copyright Act 1968 (Cth) (Copyright Act).

Additionally, the plaintiffs made two claims under the common law. First, SSGA asserted that Maurice Blackburn engaged in the tort of passing off. Second, State Street alleged Maurice Blackburn interfered with contractual relations by inducing the artist to breach the Master Agreement that she had entered into with State Street.

Decision

Justice Beach rejected the claims except insofar as the question of the future display of the replica was concerned and whether any disclaimer is required to be used with the replica.

Inducing breach of contract

Justice Beach confirmed that the tort of indirect interference with contractual relations is available under Australian law but found that the tort had neither been committed directly nor indirectly. First, the artist, Visbal, had not breached the terms of her agreement by entering into the agreement with Maurice Blackburn nor by participating in the launch event at Federation Square. Second, Maurice Blackburn did not have the relevant state of mind.

Defence of honest and reasonable belief

The court further found that Maurice Blackburn had a defence of honest and reasonable belief that it was not causing Visbal to breach her agreement with State Street, citing Justice Isaacs in Short v City Bank of Sydney (1912) 12 SR (NSW) 186. It was not relevant that Maurice Balackburn chose not to review the Master Agreement itself and instead rely on the other party’s assurance that the agreement would not breach the Master Agreement.

Common law tort of passing off and breach of Australian Consumer Law

The court denied that Maurice Balackburn made any of the representations alleged by State Street. In any event, if such representations were made, they were unlikely to confuse the relevant section of the public. Any confusion that might have been caused was made significantly less likely due to the numerous disclosures made by Maurice Balackburn which made it clear that the statue was a reproduction and that the defendants were not affiliated with the plaintiffs.

Regarding the six alleged misrepresentations outlined at paragraphs 682-683 of the judgment, the court found that there was nothing to suggest that the defendants’ campaign was associating Maurice Balackburn or the replica with SSGA or the original statue in New York or was endorsed by SSGA. Rather, the campaign was associating itself with the Fearless Girl concept and image which stand for equal pay and female empowerment generally. Further, the campaign was not about the finance or investment industry as such; nor was it generally about gender diversity at board level, despite encompassing such matters and making occasional reference to the same.

Insofar as the claim was framed as a breach of sections 18 and 29 of the ACL, Justice Beach found that Maurice Balackburn’s conduct in pursuit of the campaign was in trade or commerce but that this was irrelevant as the conduct did not constitute any of the representations alleged nor was it likely to deceive the relevant members of the public. Justice Beach accepted that members of the Australian public may have known of the New York statue and the name “Fearless Girl” and understood its significance in relation to gender equality. However, His Honour did not accept that those members of the public, except a very small wealthy few, namely finance professionals, would have known of SSGA generally or that State Street commissioned the New York statue. Of those few who might know such facts, none would be likely to think any of the defendants were associated with SSGA at the relevant times, particularly given Maurice Blackburn and State Street were, in Justice Beach’s words, “diametrically opposed” (at paragraph 870).

Figure 1 Replica Fearless Girl at Federation Square on 10 March 2021

Trade mark infringement

State Street alleged that Maurice Blackburn breached sections 120(1) and 120(2) of the Trade Marks Act the words “Fearless Girl” in connection with services in classes 35 and 36 relating to publicity services in fields of public interest and financial services. The court found that the use of the words “Fearless Girl” to promote the defendants’ campaign and to promote various gender related issues or messages was not trade mark use because the words “Fearless Girl” were descriptive.

Even if the words “Fearless Girl” were not used descriptively, none of Maurice Blackburn, HESTA or Cbus were using the words to distinguish their services in the course of trade, as required under section 17 of the Trade Marks Act. Though Justice Beach agreed with State Street that the use of a trade mark does not require actual sales or dealings in goods or services to occur “in the course of trade”, the words must still be used by the defendants to distinguish the services they offer, which none of the defendants did. It is not sufficient, His Honour said, that the defendants might receive a collateral commercial benefit from the use of the words, such as increased good will.

The court made a further finding that the defendants’ uses of the words “Fearless Girl” were not “in connection with the relevant services” to which the trade mark was registered. Justice Beach stated that Maurice Blackburn was not in the business of providing publicity services, and has not done so by engaging in its public interest campaign or by involving partners in such a campaign. A law firm with an interest in social justice is not a provider of publicity goods or services.

His Honour also found that Maurice Blackburn could have availed itself of the defence under section 120(2) of the Trade Marks Act, which provides that a person is not taken to have infringed a trade mark where that person establishes that using the alleged infringing mark as they did was not likely to deceive or cause confusion.

His Honour rejected Maurice Blackburn’s defence that the artist, by reason of the “no branding use” clause in the agreement with Maurice Blackburn, licensed or authorised Maurice Blackburn to use the trade mark but found that a defence under s 122(1)(b)(i) was open to Maurice Blackburn, who had used the name “Fearless Girl” in good faith and took steps that an honest and reasonable person would take to ascertain the ability to use the trade mark. Given no trade mark infringement was found, these defences fell away.

Copyright infringement Exclusive licence The Master Agreement conferred an exclusive licence upon State Street to create, use, display and distribute two-dimensional copies of the artwork and the statue in connection with:

  • gender diversity issues in corporate governance;

  • the financial services sector; or

  • itself and the products and services it offers or will offer at any time after the effective date.

Use authorised by artist

 The Master Agreement provided that all other intellectual property was to remain with Visbal. Nevertheless, at paragraph 1170, the court found that Maurice Blackburn could not be liable for any use of the statue authorised by Visbal even if Visbal had granted the exclusive right to such uses to State Street under the Master Agreement. This is because, to constitute infringement of section 36 of the Copyright Act 1968 (Cth) (Copyright Act), the uses complained of must be “without the licence of the owner of the copyright” and Visbal was, according to the court, still owner of the copyright.

Figure 2 Replica Fearless Girl at Federation Square on 23 November 2021

Scope of Master Agreement did not cover defendants’ use

Justice Beach held at paragraph 1130 that, despite campaigning in conjunction with two financial services organisations, Maurice Blackburn’s uses of the statue did not infringe State Street’s exclusive licence rights because the uses were not acts done in connection with the exclusive uses and therefore did not require licence by State Street. This was so because each of the uses only referred to gender diversity more broadly and thus did not refer to gender diversity issues in corporate governance or the financial services sector. The presence of the company names HESTA and Cbus alone were held not to be capable of making the reproduction “in connection with financial services”.

Further, insofar as State Street alleged Maurice Blackburn infringed its copyright by authorising HESTA and Cbus to publish LinkedIn posts, Justice Beach held that the superfunds’ uses of the statute were also not within the scope of State Street’s exclusive rights. Despite the super funds’ social media posts containing a reference to ‘boardrooms’, His Honour found at paragraphs 1148 that what was being referred to was gender diversity and equality broadly, not board positions or the finance industry.

Defences

The court also held at paragraph 1186 that, even if Maurice Blackburn had infringed State Street’s rights, the law firm was entitled to rely on the assurances provided by Visbal’s New York lawyer, Ms Nancy Wolf, that the exclusive licence did not apply to what Maurice Blackburn’s planned use of the statue. This assurance entitled Maurice Blackburn to rely on section 115(3) of the Copyright Act, which provides that where a defendant was not aware, and had no reasonable grounds for suspecting, that the act constituting the infringement was an infringement of the copyright, they are not liable for damages but may be liable for an account of profits. As no infringement was found, this finding had no bearing on the outcome.

Orders

SSGA’s principal claims failed and costs were awarded to Maurice Blackburn. The parties were given an opportunity to file minutes of proposed orders regarding the display of the replica in future.

In its subsequent decision on 28 May 2021, the Federal Court held the Maurice Blackburn shall not make public use or display of the replica of the “Fearless Girl” statue owned by it except where:

  • there is no plaque or other markings used with or on the replica; or

 

  • if there is such a plaque or other markings, only the following words are used:

This statue is a limited edition reproduction of the original “Fearless Girl” statue in New York that was sculptured by the artist Kristen Visbal.  The original statue was commissioned and is owned by State Street Global Advisors Trust Company. This reproduction is owned by Maurice Blackburn who purchased it from the artist. Maurice Blackburn has no association with State Street.[1]

[1] State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 3) [2021] FCA 568; 159 IPR 281
The contents of this article are intended to provide general information and commentary only. It is not intended to constitute legal advice, and has been prepared based on applicable law at the date of publication (03/12/2021).