By Winnie Lok, Solicitor
7 January 2020
In the lead up to International Women’s Day in 2017, US investment firm State Street Global Advisors (SSGA) commissioned artist Kristen Visbal to create the statue of the “Fearless Girl” to promote the firm’s support of gender diversity and women in leadership, and it was initially placed across from Wall Street’s ‘charging bull’ statue in a show of strength and defiance. An overnight sensation, the Fearless Girl made headlines across the world for her representation of female empowerment. The statue now resides in front of the NY stock exchange. Since the first statue’s creation, Visbal has gone on to create replicas of the Fearless Girl which have appeared in Los Angeles, Oslo, London and most recently, Federation Square in Melbourne.
Now the Fearless Girl is making headlines for other reasons. In response to the replicas, SSGA is claiming that they own the image and name of the Fearless Girl and have brought proceedings against Visbal in the New York State Supreme Court alleging breach of contract and violation of their trade mark and copyright in the Fearless Girl. The US firm is also suing Australian law firm, Maurice Blackburn, who commissioned the Melbourne statue, in the Australian Federal Court citing similar breaches of their intellectual property rights.
The ongoing legal battles raise many intellectual property considerations to unpack and ultimately begs the question: who “owns” the Fearless Girl?
Under the Copyright Act 1968 (Cth), the copyright owner of an artistic work (such as a sculpture or statue) is generally the author i.e. the creator. Based on this alone, it is easy to make the quick assumption that because Visbal sculpted the Fearless Girl, she must be the copyright owner. However, the Copyright Act also allows for copyright to be assigned or licensed. Assignment and exclusive licence must be in writing and signed by or on behalf of the copyright owner in order to take effect.
A common misunderstanding is that if a person commissions a work, they have paid for it and therefore, automatically become the copyright owner in every instance. In limited circumstances, a person is automatically the copyright owner of an artistic work if the artistic work is a photograph for private or domestic use (e.g. family portraits or wedding photos), or a painting or drawing of a portrait. However, unless otherwise specified in writing, the owner of any other commissioned artistic work (such as a sculpture or statue) is the author. The person who has commissioned the work can use the work only for the purpose for which it was commissioned – i.e. they are granted a licence, but ownership remains with the author unless assigned in writing.
Given that the terms of the agreement between SSGA and Visbal are largely confidential, it is difficult to determine who is the copyright owner and if copyright ownership was not assigned, whether an exclusive licence was granted to SSGA (and if so what the terms of that licence may have been). If Visbal retained copyright ownership of the Fearless Girl then, as the copyright owner, she is free to reproduce the sculpture as she wishes subject to the terms of the exclusive licence or any other contract with SSGA, if one exists.
In the Australian proceedings, SSGA is claiming that the agreement between SSGA and Visbal granted SSGA the exclusive right to use the sculpture (in 2D and 3D form) to promote gender diversity in corporate governance and in the financial services sector and placed restrictions on Visbal’s ability to deal with the rights in the sculpture in these fields – claims which Visbal denies.
The terms that SSGA and Visbal actually agreed upon in relation to the rights to the image of the Fearless Girl will have a major impact on the Australian proceeding between SSGA and Maurice Blackburn. If SSGA’s claims are found to be true, then Maurice Blackburn’s position is significantly weakened. However, if Visbal never assigned copyright or granted an exclusive licence to SSGA as they claim then SSGA may be attempting to enforce rights they do not hold. Indeed, if agreement between Maurice Blackburn and Visbal may provide some remedies for Maurice Blackburn against Visbal, if the rights Visbal provided to Maurice Blackburn were invalid or breached the rights of any third party such as SSGA.
Trade Mark Ownership and Passing Off
The owner of a registered trade mark has the exclusive right to use the mark in relation to particular goods and services. They can also prevent other traders from using a substantially identical or deceptively similar mark in relation to identical or similar goods or services. In Australia, SSGA is the owner of the registered word trade mark “FEARLESS GIRL” in respect of publicity services relating to bringing awareness of gender and diversity issues and financial advisory services. SSGA also owns a pending trade mark application which is broader and covers more areas. In short, in order for Maurice Blackburn to infringe on SSGA’s trade marks, they must 1) use the “FEARLESS GIRL” expression or something deceptively similar as a trade mark and 2) use it in relation to similar goods and services that the trade mark is registered for. It is possible that they have done so through their promotional activities prior to the unveiling of the statue in Melbourne, however this will be tested in Court.
In addition to trade mark infringement, the investment firm is also arguing that Maurice Blackburn has committed to common law tort of passing off and have made false representations under the Australian Consumer Law. In other words, Maurice Blackburn is taking a free ride on SSGA’s goodwill and reputation and representing that there is a commercial arrangement between Maurice Blackburn and SSGA when there is in fact not, and that as a result SSGA has suffered damages. SSGA is claiming that it has developed a substantial reputation and goodwill in the Fearless Girl image and name in relation to gender diversity worldwide including Australia through its Australian counterpart and Maurice Blackburn’s conduct misrepresents that there is an affiliation between SSGA and Maurice Blackburn’s sculptures. Although SSGA must also prove that there has been or is likely to be damage as a result of Maurice Blackburn’s commissioned statue in Australia, this has yet to be satisfied or properly explored.
It is important to note that prior to the unveiling of the Melbourne installation, SSGA was successful in filing an injunction against Maurice Blackburn on the basis of trade mark infringement and the likelihood that the public will be misled into thinking that Maurice Blackburn was affiliated with the original sculpture commissioned by SSGA. The injunction was ultimately lifted on the condition that Maurice Blackburn included a disclaimer on the statue and in the newspaper that the Melbourne replica was a “limited edition reproduction” of the original and that there is no affiliation between Maurice Blackburn and SSGA. Maurice Blackburn was also required to halt all promotional activities involving the replica and Fearless Girl name.
Despite Maurice Blackburn agreeing to the conditions set by SSGA in order to proceed with the planned unveiling, the Australian law firm continues to defend their position and denies any wrongdoing in commissioning the Melbourne installation. Both proceedings against Visbal and Maurice Blackburn remain ongoing and it will be interesting to see how the intertwining issues of copyright ownership, trade mark infringement, passing off and breach of consumer laws play out in the US and Australian courts.