[2021] FCA 137

Consumer Law – replica of “Fearless Girl” statute – discussion of “not insignificant number” criterion – copyright – whether copyright licence granted – inducing breach of contract by artist – limitations on artist’s rights – tort of passing off – trade mark infringement – whether ‘FEARLESS GIRL’ used as a mark.

The applicants, State Street Global Advisors Trust Company (“State Street US”) and its subsidiary, State Street Global Advisors Australia Ltd (together, “State Street”), claimed that Maurice Blackburn lawyers (“MBL”) had infringed their rights concerning the display and use of the life-size bronze statue known as “Fearless Girl”.

On 6 February 2019, MBL entered into an agreement (the “art agreement”) with Ms Kristen Visbal (the “artist”), to purchase and use a limited-edition reproduction of Fearless Girl for an Australian campaign concerning workplace gender equality including equal pay for women. The original statue had been commissioned from the artist by State Street US, and is currently located in front of the New York Stock Exchange and was the subject of a number of agreements (including a master agreement between State Street US and the artist).

The art agreement was negotiated by MBL’s National Brand and Social Media Manager (Ms Hanlan) and MBL’s external solicitor (Mr McDonald) on the one hand, and the artist and her New York lawyer (Ms Wolff) on the other hand.

MBL was joined by two superannuation funds, HESTA and Cbus, who sponsored the campaign. MBL proposed to hold an event to launch the public unveiling of the replica at Federation Square in Melbourne on 26 February 2019. MBL invited people to the launch on 12 February and 14 February 2019. On 14 February 2019, State Street commenced proceedings and obtained interim injunctions from O’Callaghan J, which restrained MBL from publicly installing the replica and required MBL to cease marketing the replica. On 21 February 2020, Beach J discharged the interim injunctions and refused interlocutory relief. On 26 February 2019, MBL hosted the launch event.

At the event, there were electronic billboards and signs of various sizes containing images of a Fearless Girl statue and the name ‘Fearless Girl’ in connection with MBL, HESTA and Cbus. The artist made two speeches at the event. There was a panel discussion involving representatives of MBL, HESTA and Cbus, which included comments about gender issues. There were also interviews given by the artist to Australian media outlets.

Inducing breach of contract

State Street US alleged that MBL induced or procured the artist to enter into the art agreement in circumstances where MBL was wilfully blind or recklessly indifferent to the fact that this would place the artist in breach of her master agreement with State Street US.

Beach J held that no such breach had been established.

His Honour also held that whether MBL was wilfully blind or recklessly indifferent to the substantial prospect of a breach of the master agreement was not the correct test, because the gravamen of the tort is intention. His Honour further held that, in any event, State Street had not proved that MBL was wilfully blind or recklessly indifferent. His Honour found that State Street had cherry-picked parts of the communications between MBL and the artist in support of its submission on knowledge, but that when those words were read in context, the meaning State Street attributed to them could not be sustained. His Honour held that State Street had failed to show the requisite intention on the part of MBL to interfere with the artist’s performance of her obligations under the master agreement or to procure a breach of the master agreement.

Indeed, his Honour found that the evidence of MBL’s lawyer and representative established the reverse: at all times, they sought to ensure that entry into the art agreement did not trespass over any obligations the artist may have had under the master agreement. His Honour found that MBL (whether by its representative or its lawyer) did not have knowledge that the artist’s entry into of the art agreement interfered with, or put the artist in breach of, her obligations under the master agreement.

Further, State Street contended that MBL induced or procured the artist to attend and participate in the launch event in such a fashion as to breach the master agreement, in circumstances where MBL had full knowledge of the relevant terms of that agreement from at least two weeks before, including various limitations on the activities of the artist and the rights and benefits granted to State Street under that agreement. Beach J held that he was not, for the most part, satisfied that those breaches had been established, but that even if they were, the tort has not been established as against MBL. His Honour held that State Street had not established that the artist breached the terms of the master agreement by entering into the art agreement or participating in the launch event. His Honour also held that MBL did not have the relevant state of mind to make out this tort, whether he considered the state of mind of the relevant MBL representative or the minds of the MBL representative and MBL’s external lawyer. His Honour considered that MBL had established that it held a genuine and reasonably entertained belief that the relevant acts would not be a breach of the master agreement.

Justice Beach noted that, to establish the tort of inducing breach of contract, State Street needed to show more knowledge on the part of MBL than just the fact of the existence of the master agreement – it needed to show that MBL had knowledge of the relevant terms of that agreement. His Honour also noted that State Street needed to show that MBL had induced or procured the breach. What needed to be shown was some persuasion, encouragement, assistance or pressure that was aimed at the contract such that there was a clear causal link between the respondent’s conduct and the breach.

Australian Consumer Law claims and passing off

Justice Beach also rejected the assertion that, in the promotion or use of the replica, MBL made various representations that were false and engaged in conduct that was misleading or deceptive or likely to mislead or deceive, or engaged in the tort of passing off.

In so doing, Beach J held that he was bound by the Full Court authority of Trivago NV v ACCC (2020) 384 ALR 496 (“Trivago”) and could not apply the test of whether a not insignificant number of persons within the relevant section of the public would be misled or be likely to be misled by reason of the impugned conduct.

Justice Beach found that MBL’s conduct was undertaken in trade or commerce, and had a purpose of promoting MBL itself, as well as public advocacy. His Honour found that the relevant class was members of the public (including members of the financial services sector). His Honour held that there was little, if any, evidence that the Australian public at large were keenly aware of, or had an interest in, the association between the New York statue and State Street, or that the reputation of the New York statue was State Street’s reputation. Justice Beach held that State Street’s market was very select, highly educated, commercially sophisticated, and not likely to make any connection between State Street and MBL simply because of the use of an artwork.

Justice Beach held that members of the Australian public may have known of the New York statue and the name “Fearless Girl” and recalled the publicity several years earlier concerning its unveiling in New York. Such members would have associated the New York statue and the name “Fearless Girl” with gender diversity and other social issues concerning equal opportunity and equal pay. His Honour did not accept that such members, except a very small wealthy few, would have known of State Street, or would have known that State Street (US) was the commissioner of the New York statue. His Honour held that those few would not mix up MBL (or HESTA or Cbus) with State Street or consider that MBL or HESTA or Cbus was associated with SSGA. The authors note that this reasoning necessarily involved a consideration of the number of members of the relevant class that might have known of the relationship between State Street US and the original Fearless Girl statue, but because his Honour found that even those few people would not be misled, the reasoning does not fall foul of Trivago.

Justice Beach said it was problematic, to say the least, to suggest that the ordinary and reasonable member of the Australian public would, in early 2019, think that State Street 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. His Honour found that there was no representation that the statue was the New York statue, or that there was an association with the New York Statue or with State Street.

Even if the alleged association representation was made, Beach J considered it was dispelled by the disclaimers which MBL had included on its published materials relating to the replica since 14 February 2019.

Passing off

State Street failed in its passing off claim, because: there was no misrepresentation; State Street did not have sufficient reputation; and State Street had not shown any damage.

Trade mark infringement

State Street US is the registered proprietor of Australian trade mark no. 1858845 for the word mark “FEARLESS GIRL” in relation to the services with a priority date of 16 March 2017 in class 35, namely publicity services in the field of public interest in and awareness of gender and diversity issues, and issues pertaining to the governance of corporations and other institutions; and class 36 in respect of funds investment; financial investment advisory services; financial management of donor-advised funds for charitable purposes; accepting and administering monetary charitable contributions; financial information.

State Street US alleged that MBL used the words “Fearless Girl” in connection with such services and thereby infringed State Street US’s trade mark under sections 120(1) and 120(2) of the Trade Marks Act 1995 (Cth) and that HESTA and Cbus also used such words in relation to such services and that MBL authorised such use.

There was no dispute that MBL, HESTA and Cbus had used the words “Fearless Girl” in connection with the replica, including in press releases and in social media posts. State Street said that MBL’s use of the Fearless Girl trade mark was not solely descriptive as the name of the artwork, but included trade mark use as the brand of the MBL campaign. Further, it said that the MBL campaign was not merely a social or political campaign, but also a form of modern marketing, namely, a cause-related publicity campaign.

Justice Beach found that “Fearless Girl” may have been used to promote the MBL campaign and to promote various gender related issues or messages, but that the use of Fearless Girl was not trade mark use, let alone trade mark infringement, as alleged.

His Honour noted that: (1) the words were used principally to describe the replica; (2) if the words were used in a fashion beyond the mere descriptive, it was not trade mark use; (3) the prominence of the words “Fearless Girl” in the various uses asserted by State Street US to be trade mark use actually reinforced his first and second points; and (4) the presence of MBL’s, HESTA’s and Cbus’s own logos on relevant material was a powerful but not definitive point against State Street US.

Justice Beach observed that even if the words “Fearless Girl” and their use were not solely descriptive, the words “Fearless Girl” were being used to describe a social campaign for gender diversity in the work-force and equal pay, and the breadth of such a campaign included within it gender diversity at board level and in the financial services sector, that did not necessarily entail that MBL’s, HESTA’s and Cbuss use of the words “Fearless Girl” was trade mark usage. His Honour rejected the proposition that the campaign was a marketing campaign for MBL, Cbus and HESTA.

His Honour also held that MBL was not in the business of providing publicity services, and had not done so by engaging in its public interest campaign or by involving partners in such a campaign. Justice Beach held that, in any event, given the use of MBL’s own mark on all of the material complained about, and the disclaimer used, its use was not likely to deceive or cause confusion (which would be relevant to section 120(2) and not section 120(1) of the Trade Marks Act.

Justice Beach also held that MBL was not engaged in the provision of services in class 36 such as funds investment. Although Justice Beach accepted HESTA and Cbus were in the financial services sector, his Honour held that neither was using “Fearless Girl” as a badge of origin in relation to the same services, or services of the same description, as the registered services.

Beach J also held that the defence under section 122(1)(b)(i) of the Trade Marks Act applied, because MBL (and Cbus and Hesta) used the mark in good faith to indicate the name of the replica.

Copyright infringement

State Street alleged that MBL’s reproduction of a two-dimensional image of Fearless Girl in campaign materials constituted an infringement of its copyright because it had an exclusive licence to use those images in relation to, inter alia, gender diversity issues in corporate governance and the financial services sector.

Justice Beach rejected this claim because he found that the campaign materials did not refer to gender diversity issues in corporate governance or the financial services sector. His Honour held that the presence of the company names HESTA and Cbus did not make the reproduction “in connection with financial services” and that comments at the launch event about gender diversity did not turn the earlier or later instances of alleged infringement into being “in connection with gender diversity issues in corporate governance”. His Honour also held that the use was licensed by the artist. Finally, his Honour found that MBL was entitled to rely on the defence of innocent infringement.

Curiously, Beach J identified the only outstanding substantial question as being what could be done with the replica and how it could be displayed in future. This seems, to the authors, to suggest that State Street might have a claim with respect to that future use, but Beach J did not describe how that could arise.