State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 2)  FCA 137 (25 February 2021)
State Street was unsuccessful in its efforts to restrain display of a replica Fearless Girl statue in Melbourne; although the parties were asked to address the issue as to whether a disclaimer is required to be used with the ongoing display of the replica.
State Street (SS) had commissioned the original Fearless Girl statue from Ms Kristen Visbal (artist) which was installed, on 7 March 2017, in Bowling Green Park, New York as part of a campaign to promote its Gender Diversity Index Fund. This campaign was widely reported through global news agencies. The statue was subsequently re-located, in December 2018, in front of the New York Stock Exchange. The master agreement limited the artist’s rights and enabled SS to control two and three dimensional copies, but permitted certain pre-approved uses by the artist, some of which were quite broad in scope.
Maurice Blackburn (MBL) subsequently entered into an art agreement with the artist to purchase and use a limited edition reproduction of the Fearless Girl statue for an Australian campaign concerning workplace gender equality (with sponsorship by Cbus and Hesta superannuation providers). Invitations were issued and, after an injunction was lifted, the launch event was held on 26 February 2019 at Federation Square, Melbourne with images of a Fearless Girl statue and the name ‘Fearless Girl’. There were subsequent paid promotional advertisements in the Herald Sun newspaper and Stellar magazine.
Beach J summarised the proceedings as SS “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.”
Beach J rejected SS’s claims that MBL tortiously induced a breach of contract by the artist or interfered with contractual relations. His Honour found that MBL did not have the relevant state of mind to make out this tort and concluded, at paragraph 564, “at the time it entered into the art agreement, MBL did not have any actual knowledge of the possibility of a breach by the artist of the master agreement, nor was MBL wilfully blind or recklessly indifferent to the risk of breach. And most relevantly, it did not have the requisite intention required for the tort.” Indeed, after entering into the art agreement with MBL and being made aware of objections by SS to the Melbourne display, the artist encouraged MBL to proceed with the launch. MBL had also received assurances from the artist’s US lawyer and believed that the master agreement between the artist and SS was not being breached by means of the sale of the replica to MBL or the launch event. Further, SS had not established that the artist breached the terms of the master agreement when entering into the art agreement with MBL or that the artist breached her obligations under the master agreement by participating in the Melbourne launch event.
In any event, Beach J considered MBL could avail itself of the defence of honest and reasonable belief. It had established that it held a genuine and reasonably entertained belief that the relevant acts would not be a breach of the master agreement. It was reasonable for MBL to rely on assurances from the artist’s US lawyer who was directly involved in negotiating the agreements with SS. Further, his Honour considered SS had not put forward any cogent evidence of any damage necessary to ground the alleged tort. Its submissions as to alleged harm were based on the erroneous assumption that it had exclusive ownership of the artwork. Rather, under the terms of the master agreement, the artist retained rights in relation to the artwork including the right to distribute reproductions.
Misleading or deceptive conduct and passing off
SS also alleged that MBL’s conduct was misleading or deceptive under the Australian Consumer Law and constituted passing off under the common law. However, Beach J rejected these claims and found that MBL did not make any false representations as to any association with SS in promoting the replica statue. MBL’s conduct concerned a campaign for gender equality generally and not principally directed to equal representation at board level or about the finance industry and without any reference to an association with SS. MBL’s conduct was “in trade or commerce” and its campaign was directed to members of the public generally which necessarily reached members of the financial services sector.
His Honour accepted evidence to the effect that the association of an artwork with the commissioner is typically short-lived. There was little, if any evidence, that the Australian public at large were aware of, or had an interest in, the association between SS and the original Fearless Girl statue in New York which took on a life of its own after it was unveiled in March 2017. SS failed to establish that the relevant members of the class in Australia, at the relevant time in 2019, associated the New York statue with it. SS wrongly sought to conflate the reputation of the New York statue with its own reputation. Beach J ultimately considered “ it is problematic to say the least to suggest that the ordinary and reasonable member of the Australian public would, in early 2019, think that [SSGA], a Boston based global financial asset manager, had licensed or approved of the replica as it was unveiled in Australia by a local plaintiff law firm known for its social justice work and its “fight for fair” mantra. Indeed that particular plaintiff law firm was well known in Australia for having a philosophy and pushing campaigns that were diametrically opposed to the likes of global financial asset managers.”
Beach J found that none of the alleged association representation were made by MBL and, even if they were, their potentially misleading or deceptive effect was dispelled by various disclaimers MBL included in its published materials. His Honour called for further submissions as to whether any such disclaimer was necessary on an ongoing basis.
Trade mark infringement
SS owned an Australian trade mark registration for FEARLESS GIRL dating from 16 March 2017 and covering various publicity services in class 35 and financial services in class 36. However, Beach J dismissed the infringement allegations by finding that the use of Fearless Girl by MBL (and Cbus and Hesta) on invitations and related promotional materials was not use of those words as a trade mark. Rather, those words were principally being used to describe the replica statue. Further, MBL was not using these words in relation to the services covered by the registered mark. His Honour noted “A law firm with an interest in social justice is not a provider of publicity goods or services. An invitation issued by a law firm to an event is not a good of the same description as publicity services.” Even if MBL’s use of Fearless Girl was trade mark use in relation to similar services, it could rely on the s120(2) defence to infringement, namely that its actual manner of use of those words would not be likely to deceive or cause confusion, particularly given MBL’s use of its own trade mark on all of the material complained about and the presence of disclaimers on some of the publicity materials. Further, MBL could also make out the defence to infringement under s 122(1)(b)(i), namely that its use of Fearless Girl was in good faith to indicate a characteristic 0fthe goods, namely the name of the artwork.
Beach J rejected the copyright infringement claims by SS on the basis that the acts done by MBL did not fall within the scope of SS’s exclusive licence.
Under the master agreement, SS has the exclusive licence relating to two-dimensional copies of the artwork in connection with (i) gender diversity issues in corporate governance, (ii) the financial services sector and (iii) itself and the products and services it offers.
MBL communicated to the public reproductions of two-dimensional images of the artwork in various Instagram, Twitter and LinkedIn posts, in invitations for the launch event, as well as at and subsequent to the launch. However, his Honour considered they ( as well as the acts by Cbus and Hesta) did not refer to gender diversity issues in corporate governance or the financial services sector at all. Further, MBL, Cbus and Hesta could rely on the art agreement with the author as a defence as the relevant acts were authorised by the artist.