State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 3) [2021] FCA 568

State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 3) [2021] FCA 568

Although SSGA had failed on its principal claims, there was a sufficient basis to make a limited order controlling MBL's future public display of the replica: MBL could display it without any plaque or markings, but if a plaque or markings were used, only the Court-approved wording could be used. SSGA was not entitled to a costs discount because there were no special circumstances and its ACL claims otherwise failed. MBL was not entitled to indemnity costs because SSGA's claims were genuinely raised and reasonably arguable and its rejection of the r 25.01 and Calderbank offers was not unreasonable when assessed at the time of the offers.

Jurisdiction
Australia
Judgment Date
28 May 2021
Procedural Posture
Consequential Orders and Costs Following Liability Decision in Consumer Law and Intellectual Property Proceeding / After Liability Judgment; Determined on the Papers
Outcome
Orders made regulating future public display of the replica; proceeding otherwise dismissed; applicants ordered to pay the first respondent's costs on a party/party basis; indemnity costs refused; lump sum costs question referred to a Registrar.
Legal Topics
['fearless Girl Statue Replica' 'future Public Display' 'disclaimer' 'australian Consumer Law Claims' 'misleading or Deceptive Conduct' 'consequential Orders' 'party/party Costs' 'costs Discount' 'indemnity Costs' 'offers of Compromise' 'calderbank Offer' 'lump Sum Costs']
['consumer Law' 'intellectual Property' 'trade Marks' 'civil Procedure' 'costs'] ['fearless Girl Statue Replica' 'future Public Display' 'disclaimer' 'australian Consumer Law Claims' 'misleading or Deceptive Conduct' 'consequential Orders' 'party/party Costs' 'costs Discount' 'indemnity Costs' 'offers of Compromise' 'calderbank Offer' 'lump Sum Costs']

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Procedural Posture

Consequential Orders and Costs Following Liability Decision in Consumer Law and Intellectual Property Proceeding / After Liability Judgment; Determined on the Papers

Legal Issues

  1. 1 ['Whether orders should be made governing the first respondent\'s future public use or display of its replica of the "Fearless Girl" statue, including whether any plaque or disclaimer should be required.' "Whether the applicants should receive a discount so that they pay only 80% of the first respondent's costs." 'Whether the first respondent was entitled to indemnity costs under r 25.14(2) of the Federal Court Rules 2011 (Cth) or Calderbank principles because the applicants rejected offers.' 'Whether the question of a lump sum costs order should be referred to a Registrar.']

Ratio Decidendi

Although SSGA had failed on its principal claims, there was a sufficient basis to make a limited order controlling MBL's future public display of the replica: MBL could display it without any plaque or markings, but if a plaque or markings were used, only the Court-approved wording could be used. SSGA was not entitled to a costs discount because there were no special circumstances and its ACL claims otherwise failed. MBL was not entitled to indemnity costs because SSGA's claims were genuinely raised and reasonably arguable and its rejection of the r 25.01 and Calderbank offers was not unreasonable when assessed at the time of the offers.

Court Disposition

Orders made regulating future public display of the replica; proceeding otherwise dismissed; applicants ordered to pay the first respondent's costs on a party/party basis; indemnity costs refused; lump sum costs question referred to a Registrar.

Orders

  • ['Subject to further order, the first respondent shall not make public use or display of the replica of the "Fearless Girl" statue owned by it except where there is no plaque or other markings used with or on the replica, or if there is such a plaque or other markings, only the words specified in the order are...