Copyright and trademark infringement, statutory and tortious claims arising from use of “Fearless Girl” statue in gender equality campaign — reputation of statue different to original use by American financial institution — power to order permanent injunction despite dismissing claims
Jagot, Burley and Rofe JJ dismissed State Street’s appeal from Beach J’s decision that Maurice Blackburn’s promotion and use of Maurice Blackburn’s copy of the famous “Fearless Girl” statue was not misleading or deceptive, primarily because Australians would be unaware of the link between State Street and Fearless Girl. However, the Full Court set aside Beach J’s order that that the law firm must not use or display their replica of Fearless Girl with any plaque or other markings unless the markings set out a detailed statement about the history of the statue’s provenance, notwithstanding that State Street had failed to establish any wrongful conduct on the part of Maurice Blackburn.
Fearless Girl is a 130cm inch bronze sculpture of a girl striking a defiant pose created by Kristen Visbal. The statue was originally installed on 7 March 2017, the day before International Women’s Day, in front of the far more imposing 3.4 m high Charging Bull sculpture on Wall Street in New York.
State Street, a large asset management company, commissioned the Fearless Girl statue as part of a marketing campaign to promote its Standard & Poor’s Depository Receipts Gender Diversity Index Exchange Traded Funds (known as the “SHE fund”) and as part of its campaign to increase the number of women on the boards of 3,500 companies in the US, UK and Australia. The campaign, and the statue, received wide publicity around the world. State Street subsequently obtained registration of the trade mark FEARLESS GIRL in Australia in class 35 and 36 and obtained an exclusive licence from Ms Visbal with respect to using two and three dimensional reproductions of the Fearless Girl statue in connection with “gender diversity issues in corporate governance” or financial services that State Street offered.
In February 2019, the law firm Maurice Blackburn, which was an advocate on issues of workplace sexual harassment, gender discrimination in hiring, and the gender pay gap, commissioned Ms Visbal to produce a reproduction of the Fearless Girl statue. It did so as part of its own campaign concerning workplace gender equality, including equal pay for women, which was co-sponsored by two Australian superannuation funds, CBUS and HESTA. The campaign was launched by the unveiling of the Fearless Girl replica at Federation Square in Melbourne.
State Street sought injunctive relief restraining Maurice Blackburn from using the Fearless Girl replica on the basis that doing so was misleading and deceptive in contravention of the Australian Consumer Law, a copyright infringement and a trade mark infringement.
As to the copyright claim, at trial, Beach J had found that Maurice Blackburn’s use of its replica of the statue did not fall within the exclusive rights granted to State Street by the sculptor, namely use of reproductions of the statue “in connection with” diversity issues in corporate governance or the financial services sector. The Full Court held that it was not enough that Maurice Blackburn’s campaign was broad enough to encompass those uses. The Full Court observed 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 or object X is also the creation, use, display or distribution of the reproduction in connection with purpose or object Y.” The Full Court narrowly construed the written licence.
As to the trade mark claim, at trial, Beach J had found that Maurice Blackburn’s various uses of “Fearless Girl” were not “use as a trade mark in the course of trade” as required to find infringement. State Street argued that the judge’s finding that Maurice Blackburn’s conduct was in trade or commerce for the purposes of the ACL claim was inconsistent with the finding that its use of name “Fearless Girl” was not “in the course of trade” for the purposes of trade mark infringement. State Street also argued that the primary judge failed to recognise that Maurice Blackburn’s use of “Fearless Girl” could operate both as the mere title of the statue (which was not use as a trade mark) and also as a trade mark for Maurice Blackburn’s campaign.
The Full Court did not accept that the primary judge had erred – focussing on whether Maurice Blackburn’s use was use as a trade mark “that is, as a sign to distinguish goods or services dealt with or provided in the course of trade by a person from” those of others. Artistic naming conventions required the replica to be called Fearless Girl. When Maurice Blackburn’s uses of “Fearless Girl” were considered in detail, each involved use of the words to describe the replica statue, rather than seeking to distinguish the origin of the services of the law firm. Maurice Blackburn used its own logo to distinguish its services. The same applied to the social media posts using “#fearless girl” which, in context, was used to identify the replica statue, not its maker or source.
As to the ACL claim, at trial, Beach J had found that the Fearless Girl statue had achieved a level of fame in Australia as a public artwork associated with gender diversity issues generally, which dwarfed any association in Australia between State Street, its Fearless Girl marketing campaign and the original Fearless Girl statue. His Honour found that Maurice Blackburn’s campaign intended to promote workplace gender equality and equal pay rather than tap into any narrative around State Street and its association with the Fearless Girl statue. In short, the Full Court agreed that the primary judge had correctly identified the differences between the reputation and associations in the mind of the Australian public in respect of the Fearless Girl statue, State Street and its marketing campaign on the one part, and Maurice Blackburn’s campaign on the other, after considering “the swathes of evidence upon which the appellants relied in the appeal”. This finding is interesting, indicating as it does that a commissioned work may transcend the reputation of the commissioner. It may be that State Street’s case would have been stronger had the events the subject of the litigation occurred immediately after the launch of the original statue, when its reputation was more closely tied to State Street.
Maurice Blackburn cross-appealed the primary judge’s decision, made after trial notwithstanding having dismissed State Street’s claims, to award an injunction limiting Maurice Blackburn’s use of its Fearless Girl replica such that it could not have a plaque associated with it, unless the plaque set out State Street’s relationship with the original statue. The primary judge made the injunction even though the basis for doing so was “not strong” in order to resolve the “unnecessary and continuing posturing of both parties”. The cross-appeal succeeded and the Full Court set aside that injunction. The Full Court rejected the reasons given by the judge as a sufficient basis for ordering injunctive relief, where Maurice Blackburn’s past conduct had not been found wrongful and there was no evidence of any prospective conduct that would be.
However, the Full Court rejected Maurice Blackburn’s cross-appeal from Beach J’s refusal to order indemnity costs on the basis of a formal offer of compromise. The question came down to whether it was not unreasonable for State Street to reject the offer, and the Full Court held that his Honour had not taken into account any irrelevant considerations in coming to his view.