A symbol of strength, defiance and a timely reminder of the importance of empowering women, the iconic bronze statue, Fearless Girl, has been the source of recent controversy in Australia.

In 2016, US company State Street Global Advisors Trust Company (State Street Global) commissioned the artwork created by Kristen Visbal of a 'strong and confident girl'. The piece was displayed opposite the Charging Bull statue at Bowling Green Park on Wall Street in New York City's Financial District the following year. Intended to coincide with International Women's Day, State Street Global used the statue to promote its business and new product offerings, as well as female representation on company boards and the importance of gender diversity in senior business leadership.

State Street Global did not enter into a formal agreement with Ms Visbal at the time the New York statue was created. After its unveiling, however, Ms Visbal and State Street Global formed an agreement (the Master Agreement) governing the ongoing use, display and promotion of the New York statue, and the Fearless Girl trade mark and artwork embodied in the statue.

Under the Master Agreement, Ms Visbal granted State Street Global a worldwide, exclusive licence to use the artwork (including two-dimensional and three-dimensional reproductions of it) to promote gender diversity issues in corporate governance and the financial services sector, and State Street and its products and services.

All other rights not expressly licensed to State Street Global were retained by Ms Visbal, subject to a number of restrictions imposed on Ms Visbal's use of the artwork, including any use as a brand.

Fearless Girl down under

In 2019, Maurice Blackburn entered into an agreement with Ms Visbal to purchase and use a limited edition reproduction of Fearless Girl for a campaign in Australia concerning workplace gender equality and equal pay for women (the Art Agreement). Maurice Blackburn sought partners to support the campaign and contribute financially to bringing Fearless Girl to Melbourne, which included financial heavyweights Cbus and HESTA. In forming the Art Agreement, Maurice Blackburn made efforts to ensure its terms properly covered the intended use of the artwork and received advice on compliance with the Master Agreement and assurances from Ms Visbal and her New York lawyer.

State Street Global and its Australian subsidiary (collectively, State Street) brought proceedings against Maurice Blackburn, Cbus and HESTA for:

• trade mark infringement;
• copyright infringement;
• the tort of interference with contractual relations (on the basis that they had induced Ms Visbal to breach the Master Agreement);
• breaches of the prohibitions on misleading or deceptive conduct under the Australian Consumer Law (ACL); and
• the tort of passing off.

In the Federal Court, Justice Beach rejected all claims.

Trade mark infringement

Justice Beach rejected that Maurice Blackburn, Cbus or HESTA had engaged in trade mark infringement in their use of the words 'Fearless Girl'. The words were not used by them in the course of trade, but rather principally to describe the replica. The court held that there was no evidence the words had been used as a marketing campaign for the business of its sponsors or in the course of providing publicity services.

Evidence showed that Maurice Blackburn had made significant efforts to determine the scope of 'no branding clauses' in the Master Agreement during negotiations with Ms Visbal's lawyer, which was relied on to establish the statutory defence that use of the Fearless Girl trade mark was in good faith to indicate the kind, quality, intended purpose or some other characteristic of the replica (being its name). Indeed, the name of the artwork was the only correct way to describe the replica, with Justice Beach emphasising that it would have been inappropriate and possibly misleading to refer to the statue using a different name.

Copyright infringement

Justice Beach's construction of the parameters of the copyright licence in the Master Agreement meant that Maurice Blackburn was not found to have engaged in copyright infringement. He found that the Master Agreement limited State Street's exclusive licence to the display and distribution of two- and three-dimensional copies of the artwork in connection with:

• gender diversity issues in corporate governance;
• the financial services sector; or
• itself and the products and services it offers.

Justice Beach found that gender diversity issues were only relevant to the corporate governance limb of the licence, and State Street was granted exclusive rights to use the artwork in connection with the financial services sector (not only gender diversity issues in the financial services sector). Nevertheless, Maurice Blackburn's actions were found to fall outside the scope of State Street's exclusive licence, as none of the campaign materials and communications relating to the Australian replica referred to either gender diversity issues in corporate governance or the financial services sector at all. Rather, Maurice Blackburn's campaign was broader, tapping into themes of equal pay, equal opportunity and gender equality across all levels of employment in all sectors, and was directed to young women rather than people in finance or investment. Notably, the presence of the references to HESTA and Cbus on materials was also not capable, in and of itself, of causing reproduction of the artwork to be considered 'in connection with financial services', even though those companies operate in the financial services sector.

Interference in contractual relations

State Street alleged that Maurice Blackburn induced Ms Visbal to enter into the Art Agreement, and to attend and participate in the launch event for the Melbourne replica, in breach of the limitations of the Master Agreement. Justice Beach rejected these claims on the basis that State Street had not established the relevant state of mind on the part of Maurice Blackburn and, in any case, that there was no basis for a claim Ms Visbal had breached the terms of the Master Agreement by her conduct in entering into the Art Agreement.

The judge relied on communications throughout the drafting of the Art Agreement between Maurice Blackburn and Ms Visbal's lawyer, who co-authored the Master Agreement, to show that Maurice Blackburn did not have the requisite intention of inducing a breach. During these communications, Ms Visbal's lawyer repeatedly assured Maurice Blackburn that the parameters of the Art Agreement were compliant with the Master Agreement. On this basis – and given that Maurice Blackburn's representatives had not received a copy of the Master Agreement – the judge held that there was a genuine and reasonably entertained belief that entry into the Art Agreement, and the carrying out of the acts contemplated under it, would not be in breach of the Master Agreement.

Breaches of the ACL and passing off

State Street argued that Maurice Blackburn had represented that the replica was the New York statue, or generally that there was an association with the New York statue or State Street itself. Justice Beach did not accept that any of those representations were made. Important for the purpose of these findings was the prominent use of disclaimers in advertising materials, which stated that the Melbourne statue was a replica of the original and dispelled any affiliation with the New York statue or State Street.

For the same reasons, Justice Beach confirmed that there were no relevant misrepresentations to establish a claim in passing off (and, in any case, also held that State Street did not have a sufficient reputation in Australia to support such a claim).

Takeaways

This case is a timely reminder for businesses to obtain targeted legal advice when entering agreements relating to the use of intellectual property to ensure that the terms properly address what uses are permitted and restrictions are imposed.

Maurice Blackburn's conduct in making efforts to investigate the parameters of the Master Agreement, receive legal advice from the artist's lawyer and craft obligations in the Art Agreement in compliance with existing licences proved important in negating State Street's claims. On the other hand, it appears that the restrictions imposed on Ms Visbal's ongoing use of the Fearless Girl artwork were not as broad as State Street Global wished to protect their investment in, and reputation relating to, the Fearless Girl statue, and left room for other uses of Fearless Girl that State Street Global was not comfortable with.

Finally, where there may be a perceived shortfall in agreement terms from the perspective of one of the parties, Australian statutory regimes and common law will not necessarily provide the relevant protections to compensate for this failure.