The original ‘Fearless Girl’ statute was commissioned by State Street, a US finance company, to be a symbol of State Street’s initiatives about gender diversity in corporate governance and the financial services sector. In 2019, Maurice Blackburn (MB), an Australian law firm, commissioned the same artist to create a replica for an Australian workplace gender equality campaign. The case of State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 2) [2021] FCA 137 in the Federal Court of Australia considered whether State Street could prevent MB from using and promoting a replica of the “Fearless Girl” statute in Australia. State Street claimed trade mark infringement, copyright infringement, misleading or deceptive conduct and passing off and inducing breach of contract. They failed in all causes of action. 

State Street owned a trade mark registration for the work mark ‘Fearless Girl’ in ‘publicity services’ and ‘financial services.’ Justice Beach dismissed the allegation of trade mark infringement because in Australia, “Fearless Girl” was used to describe the replica statue and was not used in relation to the offering of the services associated with State Street’s trademark. 

The artist granted State Street an ‘exclusive licence’ to promote gender diversity issues in corporate governance and in the financial service sector, so MB did not infringe copyright in the work because their acts were not within the scope of State Street’s exclusive rights as MB’s campaign was broadly focussed on gender equality and not limited to the financial services sector. The claims of misleading or deceptive conduct and passing off were not made out either, because the replica was not made in association with State Street.

This case is an illustrative example of the requirement to precisely define the scope of exclusive licence rights in copyright and trade mark protection. 

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