State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd

• Jurisdiction: Australia Federal only
• Court: Full Federal Court (Australia)
• Judgment Date: 08 April 2022
• Neutral Citation: [2022] FCAFC 57
• Date: 08 April 2022

Federal Court of Australia

State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd [2022] FCAFC 57

Appeal from:	State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 2) [2021] FCA 137; State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 3) [2021] FCA 568
File number(s):	VID 337 of 2021
Judgment of:	JAGOT, BURLEY AND ROFE JJ
Date of judgment:	8 April 2022
Catchwords:	INTELLECTUAL PROPERTY — copyright and trademark infringement, statutory and tortious claims arising from use of statue in gender equality campaign — where primary judge correctly found that statue had broader reputation in Australia distinct from original use by American financial institution — where primary judge erred by ordering permanent injunction despite dismissing appellants’ claims — cross-appeal allowed in part, appeal otherwise dismissed
Legislation:	Competition and Consumer Act 2010 (Cth) sch 2, ss 18(1), 29(1), 232(1), 232(4); Copyright Act 1968 (Cth) ss 115(3), 121 Federal Court Rules 2011 (Cth) rr 25.01(1), 25.14(2) Trade Marks Act 1995 (Cth) ss 17, 120(1)–(2), 122(1)(b)(i)
Cases cited:	Australian Competition and Consumer Commission v TPG Internet Pty Ltd [2020] FCAFC 130; (2020) 278 FCR 450 Australian Woollen Mills v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641 Knight v Beyond Properties Pty Ltd [2007] FCAFC 170; (2007) 242 ALR 586 Kraft Foods Group Brands LLC v Bega Cheese Limited [2020] FCAFC 65; (2020) 377 ALR 387 Trivago N.V. v Australian Competition and Consumer Commission [2020] FCAFC 185; (2020) 384 ALR 496 Woolworths Ltd v BP plc (No 2) [2006] FCAFC 132; (2006) 154 FCR 97
Division:	General Division
Registry:	Victoria
National Practice Area:	Intellectual Property
Sub-area:	Copyright and Industrial Designs
Number of paragraphs:	126
Date of hearing:	21–23 February 2022
Counsel for the Appellants/Cross-Respondents:	Mr D Shavin QC and Mr M Fleming
Solicitor for the Appellants/Cross-Respondents:	Gilbert + Tobin
Counsel for the Respondent/Cross-Appellant:	Mr C Golvan QC and Ms M Marcus
Solicitor for the Respondent/Cross-Appellant:	Simpsons Solicitors

ORDERS

		VID 337 of 2021
BETWEEN:	STATE STREET GLOBAL ADVISORS TRUST COMPANY First Appellant ; STATE STREET GLOBAL ADVISORS AUSTRALIA LTD (ACN 003 914 225) Second Appellant
AND:	MAURICE BLACKBURN PTY LTD (ABN 21 105 657 949) (TRADING AS MAURICE BLACKBURN LAWYERS) Respondent
AND BETWEEN:	MAURICE BLACKBURN PTY LTD (ABN 21 105 657 949) (TRADING AS MAURICE BLACKBURN LAWYERS) Cross-Appellant
AND:	STATE STREET GLOBAL ADVISORS TRUST COMPANY First Cross-Respondent ; STATE STREET GLOBAL ADVISORS AUSTRALIA LTD (ACN 003 914 225) Second Cross-Respondent

order made by:	JAGOT, BURLEY AND ROFE JJ
DATE OF ORDER:	8 APRIL 2022

THE COURT ORDERS THAT:

1. The appeal be dismissed.

2. The appellants pay the respondent’s costs of the appeal as agreed or taxed.

3. The cross-appeal be allowed in part.

4. Order 1 of the Court’s orders made on 28 May 2021 be set aside.

5. Other than to the extent in order 4 above, the cross-appeal otherwise be dismissed.

6. The cross-respondents pay 90% of the cross-appellant’s costs of the cross-appeal.

7. Any party seeking to vary a costs order may do so by notifying the Court and the other party within 14 days of the proposed varied order it seeks accompanied by a written submission not exceeding 2 pages in support.

8. Any party served with a written submission in accordance with order 7 may file and serve a written submission not exceeding 2 pages in support of its position on costs within a further seven days thereafter.

9. Subject to any request by a party to the contrary which is accepted, costs will be determined without a further oral hearing.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

THE COURT:

Background

1. After a hearing of seven days the primary judge published reasons for judgment of [1191] paragraphs rejecting all of the appellants’ claims including claims for misleading and deceptive conduct, passing off, trade mark infringement, and copyright infringement: State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 2) [2021] FCA 137. All of those claims arose from a common set of facts. Most of the 16 errors in the primary judge’s reasoning alleged on appeal are said to arise from the primary judge’s mischaracterisation of the evidence.

2. The first appellant, State Street Global Advisors Trust Company (SSGA), commissioned a statue entitled “Fearless Girl” from an artist, Kristen Visbal, 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 SSGA’s Gender Diversity Index. That index measures the performance of large US capitalisation companies that exhibit gender diversity in their senior leadership positions.

3. SSGA installed the statue opposite the Charging Bull statue at Bowling Green Park on Wall Street in the Financial District of Manhattan, New York City the night before International Women’s Day on 7 March 2017. A plaque was placed beneath the statue that stated “Know the power of women in leadership. SHE makes a difference” with SSGA’s logo. “SHE” referred to the ticker symbol of the SHE fund and the gender of the girl shown in the statue, Fearless Girl. At the same time SSGA launched a “Fearless Girl” marketing campaign in which SSGA called on 3500 companies in the US, UK and Australia representing more than US$30 trillion in market capitalisation to increase the number of women on their boards. This campaign received wide publicity around the world.

4. On 12 May 2017 SSGA and the artist, Ms Visbal, entered into an agreement (called a master agreement). Under the master agreement Ms Visbal granted SSGA 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 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, SSGA. The master agreement also recorded that SSGA “filed an intent-to-use application to register the term “Fearless Girl” as a trademark (the “Mark”) in the United States Patent and Trademark Office” and SSGA is “the exclusive owner of the Mark”.

5. The exhibits to the master agreement include a copyright licence from Ms Visbal to SSGA and a trade mark licence from SSGA to Ms Visbal.

6. By the copyright licence Ms Visbal granted to SSGA the exclusive right to create and use two- and three-dimensional copies of the statue in connection with “(A) gender diversity issues in corporate governance and in the financial services sector; and (B) SSGA and the products and services SSGA offers and/or will offer at any time after the Effective Date”. Ms Visbal agreed not to “grant the rights described herein as granted to SSGA to any third party”.

7. The trade mark licence recorded that “SSGA 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...