State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd

In the matter of State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd, the Federal Court of Australia was tasked with resolving a dispute concerning copyright and trademark infringement, as well as statutory and tortious claims arising from the use of a statue in a gender equality campaign. The appellants, State Street Global Advisors Trust Company, brought claims against the respondent, Maurice Blackburn Pty Ltd, alleging infringement of copyright and trademark rights, and misuse of the iconic statue in a political campaign. The primary judge dismissed all of the appellants' claims but granted a permanent injunction to the respondent. Both parties subsequently appealed and cross-appealed certain aspects of the primary judge's decision.

The court was required to determine whether the primary judge correctly found that the statue had a broader reputation in Australia, distinct from its original use by the American financial institution, State Street Corporation. The court also had to consider whether the primary judge erred in ordering a permanent injunction despite dismissing the appellants' claims. Additionally, the court needed to assess the weight given to the evidence of the respondent's witnesses in relation to the defence against the appellants' claims. The court had to examine whether the primary judge's consideration of these factors constituted a vitiating error, and whether the conclusions drawn were reasonable and justified.

The court found that the primary judge was correct in determining that the statue had a broader reputation in Australia, separate from its original use by State Street Corporation. However, the court held that the primary judge erred in ordering a permanent injunction despite dismissing the appellants' claims. The court allowed the cross-appeal in part, setting aside the permanent injunction, and otherwise dismissed the cross-appeal. The court considered the costs associated with the unsuccessful part of the cross-appeal to be relatively minor, and accordingly reduced the respondent's costs of the cross-appeal by 10%. The court also provided the parties an opportunity to apply to vary the costs orders.

The court made several orders, including dismissing the appeal, setting aside the permanent injunction, and reducing the respondent's costs of the cross-appeal by 10%. The court also provided the parties an opportunity to apply to vary the costs orders, subject to certain conditions. The parties were given a limited timeframe to submit written submissions in support of their positions on costs, and the court determined that costs would be decided without a further oral hearing, unless a party requested otherwise.