Australian “Fearless Girl” keeps standing

Whilst ostensibly designed to be a symbol of gender equality, the “Fearless Girl” statue has largely been mired in controversy and legal proceedings since its installation in New York in 2017. The most recent instalment in the ongoing saga has been the handing down of the recent full Federal Court decision in State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd [2022] FCAFC 57.

As a quick recap of the facts, SSGA commissioned artist Kristen Visbal to create the “Fearless Girl” statue to be used in SSGA’s promotion of its ‘SHE’ gender diversity index exchange traded fund. SSGA intended the statue to symbolise gender diversity, and to call attention to the issue of pay and promotion inequality on Wall Street. Maurice Blackburn, a local Australian Law firm, commissioned Ms Visbal to create a replica of the “Fearless Girl” statue for use in its workplace gender equality campaign. SSGA alleged that by doing so Maurice Blackburn was infringing its rights in the statue, engaging in misleading and deceptive conduct, trade mark infringement, copyright infringement and various tort claims including passing off and breach of contract.

In the first instance decision, Justice Beach found that SSGA failed on all of its claims. The decision of the Full Court was no less dismissive.

Whilst the appeal findings were not unexpected, they are a timely reminder to consider the importance of any contractual arrangements with respect to the various rights of each party to use intellectual property. Justice Beach noted that:

SSGA has sought to weave its web of statutory and tort claims in a such a fashion as to effectively assert monopoly rights in an icon that it does not have” and that there was “considerable disparity between what [SSGA] paid for and what it now asserts it is entitled to protect. But Australian statute law and tort law cannot fill that gap.

As in Fonterra Brands (Australia) Pty Ltd v Bega Cheese Ltd [2021] VSC 75, this case emphasises the importance of the scope of licence rights in any licensing arrangement, particularly long-term licensing arrangements. The parties need to turn their minds to the future possibilities for the business, the brand, and the use of the intellectual property. Importantly, the contract should deal not only with what the parties can do, but what they cannot do.

BA(Eng&Hist) LLB(Hons) GradDipLegPrac GradDipAppFin&Inv MCyberSecOps

Melissa Wingard is a senior commercial technology lawyer, with over 15 years’ experience, assisting software, cybersecurity, and technology companies, across the Asia Pacific region, grow their business and meet strategic aims, whilst managing risk and regulatory compliance.