Four years ago a small, defiant figure, her ponytails flying in the wind, stared down a striking manifestation of Wall Street's animal spirits: a three-tonne bronze bull. Fearless Girl has resonated with the public; a version of her has been installed in Melbourne's Federation Square, Oslo and London.
Whether her clones could be dispatched around the globe is a question that has led to various law suits and (in Australia) a helpful reminder that there can be considerable disparity between what a business pays for and what it may subsequently assert it is entitled to protect, and "Australian statute law and tort law cannot fill that gap" (State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 2)  FCA 137).
Fearless Girl travels to Australia
In 2016, State Street Global Advisors Trust Company (State Street Global), commissioned New York-based artist, Kristin Visbal, to create a bronze statue of a "strong and confident girl" to stand opposite the Charging Bull statue at Bowling Green Park on Wall Street. "Fearless Girl" was intended to promote and bring awareness to the company's efforts to promote gender diversity in corporate governance and women in corporate leadership positions, as well as its business and product and service offerings.
Fearless Girl's creation was subject to a Master Agreement between State Street Global and Visbal. Among other things, the Master Agreement governed the ongoing use, display and promotion of the statue, the FEARLESS GIRL trade mark and the artwork embodied in the statue. In particular, Visbal granted the company a worldwide, exclusive licence to use the Fearless Girl statue in connection with:
- gender diversity issues in corporate governance;
- the financial services sector; or
- the company and its products and services.
The Master Agreement otherwise reserved all uses not otherwise licensed to the company to Visbal. Importantly, she retained the copyright in the statue, including the right to create, display and distribute copies of the statue.
In 2019, Maurice Blackburn Lawyers (MB) entered into an agreement with Visbal to acquire a replica of the Fearless Girl statue for use in a campaign to promote workplace gender equality issues including, equal opportunity and equal pay (Art Agreement). To ensure that the replica could be used in the manner contemplated for the campaign, MB sought to ensure that the uses it required were specifically identified in the Art Agreement.
State Street Global and its Australian subsidiary (together State Street) sought to restrain MB's use of the statue and commenced proceedings against MB alleging that it had:
- tortiously interfered with contractual relations;
- contravened the Australian Consumer Law;
- engaged in passing off;
- infringed copyright; and
- infringed State Street's registered trade mark for FEARLESS GIRL.
The court rejected each of its claims, leaving only the issue regarding whether any disclaimer is required to be used in conjunction with the replica's continued public display to be heard at a later date.
Contraventions of the ACL and passing off
While Justice Beach accepted that the alleged representations had been made in trade or commerce, he did not accept that any of them had been made out. There was no representation that the replica in issue was the New York statue nor one associating MB, its corporate partners in the campaign or the replica with the New York Statue or State Street.
In finding that none of State Street's alleged representations had been successfully made out, the Court had regard to a number of factors, including expert evidence from a Senior Curator of Sculpture that the meaning and value of an artwork is created by the skill of the artist, rather than the commissioner. Further, the Court also stated that even if the alleged representations were made, their potentially misleading or deceptive effect was dispelled by the various disclaimers that MB put on its materials.
For the same reasons Justice Beach held that there were no relevant misrepresentations to found a claim in passing off; moreover, State Street did not have sufficient reputation in Australia to support that claim.
Interference in contractual relations by inducing the artist to breach the Master Agreement
State Street failed to establish that the artist had in fact breached the Master Agreement by entering into the Art Agreement or participating in the MB campaign launch. It also failed to demonstrate that MB had the requisite intention to interfere with the artist's performance of her obligations under the Master Agreement or induce a breach of that agreement.
Relevant to Justice Beach's conclusion was the fact that in negotiating the Art Agreement, MB's solicitors engaged in various discussions with the artist's lawyer who had also negotiated the Master Agreement. During those communications, the lawyer stated on multiple occasions that Visbal owned the copyright in the statue, the allegations of any breach of the Master Agreement were unfounded, and entry into the Art Agreement did not trespass over any of Visbal's obligations under the Master Agreement. In those circumstances, the Court considered that MB was entitled to rely on assurances given by the lawyer that it could use the replica for the campaign, even though it had not received or reviewed a copy of the Master Agreement.
Trade mark infringement
While the parties accepted that MB had used the words "Fearless Girl" to promote its campaign, the Court considered that MB had not used those works as a trade mark, let alone in relation to any goods and services for which the mark was registered. Rather, MB had used them to describe the replica itself. Indeed Justice Beach found that the name of the artwork was the only correct way to describe the replica, and it would have been inappropriate and possibly misleading to refer to it using a different name.
Finally, Justice Beach agreed with MB that its acts of reproduction and communication in respect of the replica did not infringe State Street's copyright because it was licensed by the artist under the Art Agreement to do those acts. The Court found that the Master Agreement conferred on State Street a more limited set of rights than what it asserted. The conduct of MB was not found to fall within the scope of State Street's exclusive licence because those acts did not refer to gender diversity issues in corporate governance or the financial sector at all. Rather, the purpose of the MB campaign was broader – it was a campaign to promote themes of equal pay, equal opportunity and gender equality across all levels of employment sectors, and was directed to young women rather than finance or investment types.
Knowing what intellectual property rights you have (and don't have)
The case is a reminder for businesses to understand the precise scope of their intellectual property rights, particularly when creating content or acquiring or commissions content from a third party. This is important to ensure against not only diminution of those rights but also the potentially significant real world value that exclusivity in IP-rich assets might present to a business.
If those rights are required for a specific purpose and are being acquired by way of agreement, it is important to ensure that the agreement properly reflects the businesses expectations of what it is acquiring and the uses to which it proposes to put those rights. As was clear in this case, Australian statute law and tort law will not fill the gap that might otherwise be created where there is a disparity between what a business pays for and what it may subsequently assert it is entitled to protect.