State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 2)

In the Federal Court of Australia, State Street Global Advisors Trust Company brought an action against Maurice Blackburn Pty Ltd (MBL) involving claims of misleading or deceptive conduct, copyright infringement, inducement of breach of contract, passing off, and trade mark infringement. The dispute arose from MBL’s creation and display of a replica of the Fearless Girl statue. State Street Global Advisors argued that MBL’s actions constituted misleading or deceptive conduct, breached copyright, induced breach of contract, passed off the replica as the original, and infringed a trade mark. The central legal issues were whether MBL’s conduct was in trade or commerce, the effectiveness of disclaimers in statutory claims, the scope of copyright protection, the conditions for inducement of breach of contract, the criteria for passing off, and the parameters of trade mark infringement.

The Court found that MBL’s conduct did not amount to misleading or deceptive conduct as it did not meet the threshold of affecting a "not insignificant number" of people. The Court also determined that the disclaimer did not negate the misleading or deceptive conduct claim, rejecting the reasoning of previous Full Federal Court decisions. Regarding copyright infringement, the Court held that MBL did not infringe copyright as the reproduction did not constitute an artistic work. The claim of inducement of breach of contract was dismissed because MBL lacked knowledge of the master agreement's terms. The Court found no passing off as the replica did not have a relevant reputation, and the trade mark infringement claim failed because "Fearless Girl" was not used as a trade mark.

The Court dismissed all of State Street Global Advisors' claims, except for the unresolved matter of the replica's future display. The Court ordered the parties to submit proposals for the replica's display and other final orders, and invited submissions on costs. The Court also directed that any previous orders regarding the master agreement be varied to exclude its clauses.