Know the scope of your IP rights 5 min read
State Street Global Advisors Trust Company (State Street), the US-based investment management company that originally commissioned the bronze statue known as 'Fearless Girl', has lost its case concerning a replica of the statue unveiled at Melbourne’s Federation Square in 2019.
The case highlights the importance of businesses properly understanding the scope of their IP rights when contracting with third parties.
- Buyer beware – when contracting third parties to develop creative or other works, it is imperative that businesses ensure they understand exactly what IP rights they are securing and what rights the creator and other third parties may be free to exercise and grant.
- The law cannot fill the gap where there is considerable disparity between what a business paid for and what it asserts it is entitled to protect.
In 2016, State Street’s advertising agency commissioned artist Kristen Visbal to help create a bronze statue of a 'strong and confident girl' that would stand opposite the Charging Bull statue at Bowling Green Park on Wall Street. The statue was to be a symbol of State Street’s messaging regarding the importance of gender diversity in senior business leadership. The statue came to be known as 'Fearless Girl'. The unveiling of Fearless Girl, which coincided with International Women’s Day in 2017, generated significant buzz on social media and was widely reported by global news agencies.
In 2019, Maurice Blackburn lawyers (MBL), entered into an agreement with Ms Visbal to purchase and use a limited-edition reproduction of Fearless Girl (MBL agreement), for an Australian campaign concerning workplace gender equality, including equal pay for women. The campaign was co-sponsored by two superannuation funds.
The replica was unveiled at a launch event at Melbourne’s Federation Square in February 2019. Ms Visbal and representatives of MBL and the co-sponsors spoke at the event. There were also electronic billboards and signs containing images of a Fearless Girl statue and the name 'Fearless Girl' in connection with MBL and the co-sponsors. Allens acted for one of the co-sponsors.
State Street commenced proceedings against MBL and the co-sponsors, alleging that by its conduct in procuring the replica and its conduct at the launch event, MBL had engaged in tortious interference with contractual relations, misleading or deceptive conduct, trade mark infringement and copyright infringement.
The claims against the co-sponsors were settled before trial. The Federal Court ultimately rejected each of State Street’s claims.
State Street alleged that MBL induced or procured Ms Visbal to enter into the MBL agreement in circumstances where it was wilfully blind or recklessly indifferent to the fact that this would place Ms Visbal in breach of her master agreement with State Street.
The court found that State Street failed to establish the key elements of this claim. First, it failed to establish that Ms Visbal breached the terms of the master agreement by entering into the MBL agreement or participating in the launch event. Secondly, MBL did not have the requisite intention to interfere with Ms Visbal’s performance of her obligations under the master agreement or to procure a breach of the master agreement. The evidence showed that MBL at all times sought to ensure that entry into the MBL agreement did not trespass over any obligations Ms Visbal may have had under the master agreement. As to the launch event, Ms Visbal participated on her own volition and MBL did not have any prior knowledge of what she intended to say.
State Street alleged that MBL made various representations that were false, including that the replica was the original statue and associated with State Street’s gender diversity and asset stewardship initiatives, and that MBL was associated with the original statue and associated with State Street’s initiatives.
The court held that State Street failed to establish that members of the public in 2019 associated the original statue with State Street, or even knew of State Street generally. Rather, State Street had conflated the independent fame and reputation of the original statue with its own reputation.
The court also held that MBL did not make the alleged representations. It was apparent that the replica was not being represented as the original statue. The MBL campaign was about the fight for gender equality, including equal pay for women, and was not confined to the finance industry or to gender diversity at board level. There was also no reference to any association with State Street in the campaign. Further, even if MBL had made the alleged representations, any potentially misleading effect would have been dispelled by the various disclaimers MBL put on its published material.
Under the master agreement, State Street has the exclusive licence relating to 2D copies of the 'Artwork' (being the work of visual art embodied by the original statue) in connection with gender diversity issues in corporate governance and in the financial services sector. The court held that the reproduction and communication to the public of a 2D image of a Fearless Girl statue in the launch event invitation, the billboards and in various social media posts did not refer to gender diversity issues in corporate governance of the financial services sector at all. As a result, there was no copyright infringement.
As to trade mark infringement, the court held that MBL’s use of the words 'Fearless Girl' to promote the MBL campaign and gender-related issues was not trade mark use. MBL’s use was principally to describe the replica. Even if the words were used to describe the MBL campaign, that is not trade mark use. MBL did not use the words 'Fearless Girl' as a badge of origin at all in relation to any services, let alone the services the subject of the trade mark registration (which included publicity services in the field of public interest in, and awareness of, gender and diversity issues). MBL was not in the business of providing publicity services, and did not do so by engaging in its campaign.