State Street Global Advisors (State Street), an American investment management company, has lost its appeal to the Full Court of the Federal Court of Australia (Full Court) regarding the use of a replica of the famous Fearless Girl statue by Australian law firm Maurice Blackburn.
In 2017, State Street commissioned artist Kristen Visbal to create Fearless Girl as part of a marketing campaign to promote its Standard & Poor’s Depository Receipts (SPDR) Gender Diversity Index Exchange Traded Funds (known as the SHE fund), which tracks against State Street's Gender Diversity Index. The original statue was displayed in New York City, across from the New York Stock Exchange. At that time, State Street and Ms Visbal entered into a master agreement dealing with the use of the statue. Under that agreement, Ms Visbal granted State Street an exclusive licence to “display and distribute two-dimensional copies, and three-dimensional Artist-sanctioned copies, of the Artwork to promote (i) gender diversity issues in corporate governance and in the financial services sector, and (ii) SSGA and the products and services it offers”. Ms Visbal otherwise reserved all uses of the Fearless Girl statue to herself subject to certain restrictions, and the parties agreed certain “Pre-Approved Uses”, which would not be subject to any obligation of Ms Visbal to discuss in good faith with, and obtain written approval from, State Street.
The exhibits to the master agreement included a trade mark licence. The trade mark licence recorded that State Street “is the exclusive owner of the FEARLESS GIRL trademark (the Trademark) in connection with goods and services that support women in leadership positions and the empowerment of women, and that promote public interest in and awareness of gender diversity and equality issues”. By the licence, State Street granted Ms Visbal an exclusive, royalty-free, worldwide, right and license to use the Trademark on and in connection with "(i) three-dimensional copies of the Statue in various mediums and sizes in connection with the offer of goods for sale (Merchandising); (ii) two-dimensional copies of the Statue for Artist’s portfolio, for “fine art” purposes; and (iii) two-dimensional copies of the Statue in various mediums and sizes in connection with Merchandising (collectively, the Licensed Products)."
In accordance with the trade mark licence, State Street is the registered owner of Australian Trade Mark No. 1858845 for the word mark “FEARLESS GIRL” in relation to certain services in classes 35 and 36.
In 2019, Maurice Blackburn commissioned Ms Visbal to produce a limited-edition reproduction of the statue for an Australian campaign regarding workplace gender equality. Maurice Blackburn had previously advocated on behalf of clients and independently on issues of workplace sexual harassment, gender discrimination in hiring, and the gender pay gap. Two co-sponsors, the Australian superannuation funds United Super Pty Ltd (Cbus) and H.E.S.T. Australia Ltd (HESTA), joined the Maurice Blackburn campaign, which saw the Fearless Girl replica installed in Federation Square in Melbourne’s CBD on 26 February 2019.
State Street commenced proceedings in the Federal Court of Australia alleging that Maurice Blackburn had infringed its trade mark rights in the FEARLESS GIRL mark, infringed copyright in the statue, engaged in conduct that was misleading or deceptive, or likely to mislead or deceive, in breach of the Australian Consumer Law (ACL) and conduct which amounted to the tort of passing off.
At first instance, the primary judge rejected all of State Street's claims. The primary judge held that the Fearless Girl statue had a reputation in Australia separate and distinct from both State Street itself and the State Street Fearless Girl marketing campaign. The primary judge considered that the Maurice Blackburn campaign was directed to the public at large and concerned gender equality generally, whereas State Street's Fearless Girl marketing campaign was directed to publicly listed companies and financial institutions and concerned gender diversity issues in corporate governance and in the financial services sector (particularly female representation on the boards of such companies). Despite this, his Honour did grant relief to State Street by ordering that if the replica was to be displayed with any wording, it should be displayed with very specific wording explaining its origins.
State Street subsequently appealed to the Full Court. In its appeal, State Street contended that the primary judge rejected its claims because his Honour mischaracterised the evidence and should have found that State Street's marketing campaign had given it a significant reputation and associated goodwill in Australia or, at the least, that the Australian public was aware of the State Street Fearless Girl marketing campaign and that it was used to distinguish the services of the entity behind the campaign. Interestingly, State Street observed that they did not get the opportunity to make oral submissions as a result of the COVID-19 pandemic and posited that this might explain why the primary judge consistently mischaracterised the evidence.
The Full Court dismissed the appeal with costs. A summary of the Full Court's findings in relation to the key grounds of appeal is set out below. On the COVID-19 observation, the Full Court noted that such a situation seems implausible in a case involving thousands of pages of material, multiple witnesses who gave oral evidence, and extensive reasons for judgment explaining why the primary judge did not accept State Street's case. This impression of implausibility was reinforced by the fact that State Street had been unable to identify any material evidence or submission that they contend the primary judge overlooked, or any error in principal.
Scope of State Street's rights
State Street contended that the primary judge misconstrued the rights held by State Street and wrongly assessed all of State Street's claims by reference to the master agreement. The Full Court held that neither contention was sustainable. In particular, the Full Court held that primary judge had to assess the rights which State Street acquired from Ms Visbal under the master agreement as they were the ultimate source of State Street's allegedly infringed copyright and trade mark rights. Otherwise, the Court considered it clear that the primary judge understood that the other claims did not depend on the master agreement.
Misleading and deceptive conduct and passing off
State Street argued that Maurice Blackburn represented that the Australian statue or Maurice Blackburn were somehow associated with State Street, and that the association with State Street was the reason that Maurice Blackburn chose the statue.
The Full Court agreed with the primary judge that the statue was not associated with State Street's campaign. Rather, the statue had taken on "a life of its own" and was now associated with gender equality issues generally. The Full Court quoted the primary judgment where Justice Beach held that:
"[State Street] conflates the reputation of the New York statue with its own reputation."
While many people knew the statue, not many people in Australia were aware of State Street or its connection to the statue and the Full Court held that the primary judge was right to focus on reputation in Australia.
The Full Court was not convinced by State Street's argument that Maurice Blackburn had chosen the statue because of its connection to State Street. In fact, the relationship between State Street and Maurice Blackburn was described as "antithetical" by the primary judge.
The primary judgment also dealt with State Street's claim that Maurice Blackburn represented that the replica was the New York Statue. State Street argued that an invitation issued by Maurice Blackburn to view the statue that stated "the iconic Fearless Girl statue in Australia" represented that the replica was the original. However, that invitation lead with the text "Australia's own Fearless Girl is here". The primary judge stated that in that context, the reference to "Fearless Girl in Australia" must be read with the headline "Australia's own". Taken together, the invitation text cannot be reasonably understood to mean the statue being displayed is the New York Statue. The Full Court agreed with the primary judge's reasoning.
Consistent with the reasoning applied in relation to the misleading and deceptive conduct arguments, the Full Court did not accept that Maurice Blackburn had committed the tort of passing off. The Full Court held that the primary judge was right to say that Maurice Blackburn “and its campaign partners were loosely “associated” with the New York statue, but only in the sense that they were using and promoting the replica which was of course a copy of the New York statue” but that this went nowhere. It went nowhere because there was no association found in Australia between the New York statue and State Street or State Street's Fearless Girl marketing campaign.
Trade mark infringement
On the allegation of trade mark infringement, although Maurice Blackburn and its campaign partners had used the words "Fearless Girl" to promote the replica statute and its workplace gender equality campaign, the Full Court agreed with the primary judge that they had not used the words "Fearless Girl" as a trade mark – that is, the words were not used "as a sign to distinguish … services … provided in the course of trade by a person from … services … provided by any other person". There was no dispute between the parties that artistic naming conventions require a replica to be given the same title as the original.
Copyright infringement
As noted above, the master agreement between Ms Visbal and State Street granted State Street an exclusive right to "create and use two- and three-dimensional copies of the statue in connection with ' gender diversity issues in corporate governance and in the financial services sector'". The Full Court found that there was an "important and obvious" distinction in the agreement between the exclusive field granted by Ms Visbal to State Street and all residual rights otherwise reserved by Ms Visbal. The rights reserved specifically included reproductions in connection with "Gender Diversity Goals", which were defined in the preamble as supporting “women in leadership positions, empowerment of young women, women’s education, gender equality, the reduction of prejudice in the work place through education, equal pay for women, and the general well-being of women".
State Street's campaign was held to be about gender diversity issues in corporate governance only. Maurice Blackburn's campaign was held to be about general equality for women, including equal pay. The Full Court held that:
"accepting that a purpose or object (say X) is sufficiently broad to encompass other narrower purposes and objects (say Y) does not mean that the creation, use, display or distribution of a reproduction for purpose of object X is also the creation, use, display or distribution of the reproduction in connection with purpose or object Y."
Maurice Blackburn's use of the work was considered by the Full Court to be outside the scope of State Street's exclusive licence and therefore State Street had no standing to sue for copyright infringement.
Revocation of injunctive order
In the primary proceedings, the Court ordered that Maurice Blackburn be restrained from displaying the replica unless it was displayed with no plaque, or a plaque that said only the words:
[t]his statue is a limited edition reproduction of the original “Fearless Girl” statue in New York that was sculpted[sic] 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."
Maurice Blackburn cross appealed contending that there was no proper foundation for the making of the injunction. The Full Court agreed, finding that there was insufficient foundation for the primary judge to make the injunctive order. The provisions of the ACL, which empower the Court to make injunctive orders, require that the Court be satisfied that a person has engaged, or is proposing to engage, in conduct that constitutes or would constitute a contravention of relevant provisions of the ACL, such as section 18 which prohibits a person from engaging in misleading or deceptive conduct. As the Court did not find that Maurice Blackburn had engaged, or was proposing to engage in, misleading or deceptive conduct, that requirement was not satisfied and there was no legal basis to make the injunctive order. With the Full Court revoking the injunctive order, Maurice Blackburn may now display the replica without the restrictions as to the wording of any plaques.
