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 2) [2021] FCA 137

The Court found that Maurice Blackburn did not engage in misleading or deceptive conduct under the ACL because no relevant representations of association with SSGA were made and any transient confusion was dispelled. Maurice Blackburn did not infringe copyright or trade mark rights as their use of 'Fearless Girl' was descriptive and conducted in good faith, did not constitute badge of origin use, and any reproductions did not fall within the scope of SSGA's exclusive licence. The tort of inducing breach of contract was not established as there was no proven knowledge or intention to procure a breach. SSGA lacked relevant reputation in Australia for passing off claims.

Jurisdiction
Australia
Judgment Date
25 February 2021
Procedural Posture
Civil / Final Judgment
Outcome
Claims by State Street Global Advisors Trust Company dismissed, except for the question of how the replica may be displayed in the future. Court to hear further submissions on display and disclaimer.
Legal Topics
['misleading or Deceptive Conduct' 'copyright Infringement' 'trade Mark Infringement' 'passing Off' 'inducing Breach of Contract' 'australian Consumer Law' 'art and Copyright' 'defences to Infringement']
['intellectual Property' 'consumer Law' 'tort Law'] ['misleading or Deceptive Conduct' 'copyright Infringement' 'trade Mark Infringement' 'passing Off' 'inducing Breach of Contract' 'australian Consumer Law' 'art and Copyright' 'defences to Infringement']

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Procedural Posture

Civil / Final Judgment

Legal Issues

  1. 1 ['Whether Maurice Blackburn engaged in misleading or deceptive conduct under ss 18 and 29(1)(a), (g) and (h) ACL' "Whether there was copyright infringement of the 'Fearless Girl' statue by reproduction or communication to the public" "Whether there was trade mark infringement under s 120(1) and (2) of the Trade Marks Act 1995 (Cth) for 'Fearless Girl'" 'Whether Maurice Blackburn induced the artist to breach contract (the master agreement with State Street (US))' 'Whether Maurice Blackburn engaged in passing off']

Ratio Decidendi

The Court found that Maurice Blackburn did not engage in misleading or deceptive conduct under the ACL because no relevant representations of association with SSGA were made and any transient confusion was dispelled. Maurice Blackburn did not infringe copyright or trade mark rights as their use of 'Fearless Girl' was descriptive and conducted in good faith, did not constitute badge of origin use, and any reproductions did not fall within the scope of SSGA's exclusive licence. The tort of inducing breach of contract was not established as there was no proven knowledge or intention to procure a breach. SSGA lacked relevant reputation in Australia for passing off claims.

Court Disposition

Claims by State Street Global Advisors Trust Company dismissed, except for the question of how the replica may be displayed in the future. Court to hear further submissions on display and disclaimer.

Orders

  • ['Applicants to file and serve short submissions and proposed orders concerning future display of the replica, final orders and costs within 14 days.' 'First Respondent to file responding submissions and proposed orders within 14 days of receipt.' 'Any previous suppression orders under s 37AI of the Federal Court of...