Federal Court of Australia

State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd (No 2) [2021] FCA 137

File number:

VID 113 of 2019

Judgment of:

BEACH J

Date of judgment:

25 February 2021

Catchwords:

CONSUMER LAW – misleading or deceptive conduct under ss 18 and 29(1)(a), (g) and (h) of the Australian Consumer Law whether conduct was “in trade or commerce” – characterisation of conduct – potentially affected class – discussion of “not insignificant number” criterion concerning the relevant class relevance of that criterion to “passing off” scenarios invoking such statutory provisions – conflicting Full Federal Court authority – effectiveness of disclaimer

COPYRIGHT artistic work – two-dimensional reproduction of three-dimensional statue copyright infringement under s 36 of the Copyright Act 1968 (Cth) – whether copyright licence granted for the purposes of s 121 defence of innocent infringement

TORTS – inducing breach of contract – master agreement for display and promotion of the Fearless Girl statue – art agreement for purchase and use of a limited-edition reproduction of the Fearless Girl statue – limitations on artist’s rights under the master agreement – breach of master agreement by the artist – interference with contractual relations – knowledge of terms of master agreement – defence of honest and reasonable belief – tort of passing off – relevant reputation

TRADE MARKS trade mark infringement under s 120(1) of the Trade Marks Act 1995 (Cth) whether the name “Fearless Girl” was used as a trade mark whether use was in relation to services of the same description as those covered by the Fearless Girl trade mark or closely related goods within the meaning of s 120(2) – whether use was likely to deceive or cause confusion defence of good faith use under s 122(1)(b)(i)

Legislation:

Competition and Consumer Act 2010 (Cth) Sch 2 (Australian Consumer Law) ss 18, 29(1)(a), (g) and (h)

Copyright Act 1968 (Cth) ss 10, 13, 14, 21, 31, 32, 36, 115, 119, 120, 121, 126

Trade Marks Act 1995 (Cth) ss 17, 120(1) and (2), 122(1)(b)(i)

Cases cited:

10th Cantanae Pty Ltd v Shoshana Pty Ltd (1988) 79 ALR 299

Allstate Life Insurance Co v Australia and New Zealand Banking Group Ltd (1995) 58 FCR 26

Anchorage Capital Partners Pty Ltd v ACPA Pty Ltd (2018) 259 FCR 514

Australian Competition and Consumer Commission v TPG Internet Pty Ltd (2020) 381 ALR 507

Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45

Concrete Constructions (NSW) Pty Ltd v Nelson (1990) 169 CLR 594

ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302

Donaldson v Natural Springs Australia Limited [2015] FCA 498

Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd (2016) 118 IPR 239

Hansen Beverage Company v Bickfords (Australia) Pty Ltd (2008) 171 FCR 579

Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235

Lumley v Gye (1853) 2 El & Bl 216; 118 ER 749

National Exchange Pty Ltd v Australian Securities and Investments Commission (2004) 49 ACSR 369

Nike International Ltd v Campomar Socieded Limitada (1996) 35 IPR 385

Nixon v Slater & Gordon (2000) 175 ALR 15

OBG Ltd v Allan [2008] 1 AC 1

Optical 88 Ltd v Optical 88 Pty Ltd (No 2) (2010) 275 ALR 526

Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191

Peter Bodum A/S v DKSH Australia Pty Ltd (2011) 280 ALR 639

Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379

Short v City Bank of Sydney (1912) 12 SR (NSW) 186

Short v City Bank of Sydney (1912) 15 CLR 148

Trivago N.V. v Australian Competition and Consumer Commission (2020) 384 ALR 496

Twentieth Century Fox Film Corporation v South Australian Brewing Co Ltd & Lion Nathan Australia Pty Ltd (1996) 66 FCR 451

University of New South Wales v Moorhouse (1975) 133 CLR 1

Woolworths Ltd v BP plc (No 2) (2006) 154 FCR 97

Zhu v Treasurer of the State of New South Wales (2004) 218 CLR 530

Division:

General Division

Registry:

Victoria

National Practice Area:

Intellectual Property

Sub-area:

Trade Marks

Number of paragraphs:

1191

Date of last submissions:

7 April 2020

Date of hearing:

25 to 29 November 2019, 10 and 12 February 2020

Counsel for the Applicants:

Mr DB Studdy SC and Mr MB Fleming

Solicitor for the Applicants:

Gilbert + Tobin

Counsel for the First Respondent:

Mr CD Golvan QC and Ms M Marcus

Solicitor for the First Respondent:

Simpsons Solicitors

Counsel for the Second Respondent:

The second respondent did not appear

Counsel for the Third Respondent:

The third respondent did not appear

ORDERS

VID 113 of 2019

BETWEEN:

STATE STREET GLOBAL ADVISORS TRUST COMPANY

First Applicant

STATE STREET GLOBAL ADVISORS AUSTRALIA LTD (ACN 003 914 225)

Second Applicant

AND:

MAURICE BLACKBURN PTY LTD (ABN 21 105 657 949) (TRADING AS MAURICE BLACKBURN LAWYERS)

First Respondent

UNITED SUPER PTY LTD (ABN 46 006 261 623) (TRADING AS CBUS SUPER)

Second Respondent

H.E.S.T. AUSTRALIA LTD (ABN 66 006 818 695)

Third Respondent

order made by:

BEACH J

DATE OF ORDER:

25 February 2021

THE COURT ORDERS THAT:

1.    Within 14 days of these orders, the applicants file and serve short submissions (limited to 5 pages) and minutes of proposed orders to give effect to these reasons concerning:

(a)    the future display in Melbourne of the replica of the Fearless Girl statue owned by the first respondent with or without a disclaimer;

(b)    other final orders; and

(c)    costs.

2.    Within 14 days of the receipt of such submissions and minutes, the first respondent file and serve responding submissions (limited to 5 pages) and minutes of proposed orders on such topics.

3.    To the extent necessary, any orders previously made under s 37AI of the Federal Court of Australia Act 1976 (Cth) shall be varied so as to exclude any clauses of the master agreement or its annexures reproduced in these reasons.

4.    Liberty to apply.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

BEACH J:

1    The applicants, State Street Global Advisors Trust Company and its subsidiary, State Street Global Advisors Australia Ltd, claim that Maurice Blackburn lawyers (MBL) has infringed their rights concerning the display and use of the life-size bronze statue known as “Fearless Girl”. I will refer to the applicants as SSGA collectively and as State Street (US) and State Street (Australia) for the holding company and subsidiary respectively.

2    SSGA has also sued United Super Pty Ltd (Cbus) and H.E.S.T. Australia Ltd (HESTA), but the claims against them have now been settled.

3    The background to SSGA’s claims can be shortly stated.

4    On 6 February 2019, MBL entered into an agreement with Ms Kristen Visbal (the artist), to purchase and use a limited-edition reproduction of Fearless Girl for an Australian campaign concerning workplace gender equality including equal pay for women (the art agreement). The original statue had been commissioned from the artist by State Street (US) and is currently located in front of the New York Stock Exchange (the New York statue).

5    The art agreement had been negotiated by MBL’s then National Brand and Social Media Manager, Ms Rebecca Hanlan and MBL’s external solicitor, Mr Ian McDonald of Simpsons solicitors on the one hand, and the artist and her New York lawyer, Ms Nancy Wolff on the other hand.

6    In late 2017, Ms Hanlan proposed that MBL establish a campaign to promote workplace gender equality issues. Apparently, gender equality had long been a key value of MBL. It had previously advocated on behalf of clients and independently on issues of workplace sexual harassment, gender discrimination in hiring, and the gender pay gap. Ms Hanlan’s proposal for the campaign involved promoting workplace wage equality to address the gender pay gap (the MBL campaign). And she was concerned to make the MBL campaign of interest to the media so that the campaign would get attention and generate more discussion on such issues.

7    In April 2018, a member of Ms Hanlan’s team, Ms Pia Chaudhuri, an external consultant and former employee of One Green Bean, a creative agency engaged by MBL, formulated a proposal setting out a vision for the campaign. Ms Chaudhuri’s proposal suggested an event on Equal Pay Day in September 2018. The idea was that MBL would collaborate with an Australian sculptor and create a statue to unveil on Equal Pay Day in order to launch the campaign. The intention was that the statue would embody the concept of a life-size woman standing next to a stack of bank notes representing the amount that women were paid less than men that year. Further, the desire was to place the statue somewhere in the Melbourne CBD with high foot traffic and as would befit the status of such a symbol. Further, the intention was to have unions and other organisations approached to get behind the campaign.

8    In late May 2018, another member of Ms Hanlan’s team, Mr Neil Pharaoh, a former lawyer who was working as a consultant at the time, drafted an overview document for the purpose of asking the Victorian Parliament to approve placement of the proposed statue on Parliament grounds.

9    In early June 2018, Ms Hanlan contacted various sculptors about creating the statue. But it became apparent to her that the design and creation of an original artwork would not be possible within the timeframe anticipated. Accordingly, she then had the idea of approaching the artist who had created the New York statue in order to buy a replica of the New York statue for the campaign.

10    Ms Hanlan contacted the artist about the possibility of buying a replica of the New York statue for the MBL campaign (the replica), and communications then took place between Ms Hanlan, Mr McDonald, the artist and Ms Wolff.

11    After reaching an understanding with the artist to acquire the replica, albeit that the art agreement was not signed until 6 February 2019, MBL looked for sponsors to join the MBL campaign. MBL contacted companies in a wide range of industry sectors. Ultimately, only two superannuation funds, HESTA and Cbus, joined with MBL.

12    MBL proposed to hold an event to launch the public unveiling of the replica at ZINC, an events venue at Federation Square in Melbourne’s CBD, on 26 February 2019. That date was close to International Women’s Day on 8 March 2019.

13    On 12 February 2019, MBL sent out formal invitations to the launch event to approximately 1,870 people. The invitation list for the launch event was largely compiled from MBL’s existing contact lists, together with groups of invitees proposed by HESTA and Cbus. The list included clients and those who referred work to MBL, union representatives, members of the media, and representatives from women’s advocacy and other associated interest groups.

14    On 14 February 2019, MBL sent additional invitations to a further group of invitees.

15    On the same day, SSGA commenced the present proceeding and obtained from another judge interim injunctions preventing MBL from publicly installing, showing or displaying the replica in Australia and requiring MBL to cease all marketing and promotion of the replica.

16    On 21 February 2019, I heard SSGA’s application for interlocutory injunctions seeking relief in similar terms to extend the interim injunctions. I discharged the interim injunctions and refused to grant the interlocutory relief sought by SSGA.

17    On 25 February 2019, MBL sent additional invitations to a further group of invitees.

18    On 26 February 2019, MBL hosted the launch event at ZINC in Federation Square. There were around 200 attendees including school children that had also been invited. At the event there were electronic billboards and signs of various sizes containing images of a Fearless Girl statue and the name “Fearless Girl” in connection with MBL, HESTA and Cbus. The artist made two speeches at the event. Further, there was a panel discussion involving representatives of MBL, HESTA and Cbus, which included comments about gender issues. There were also interviews given by the artist to Australian media outlets.

19    I should say now that the launch event had little if anything to do with the finance industry or promoting financial services or products. And those present hardly represented the typical demographic that one would expect to find at a cocktail function for financial players. Further, very few of those present at the launch event would ever have heard of State Street (US), State Street (Australia) or their operations. They were not well known at the time in Victoria at least by members of the public. They had no retail operations in Victoria. And their offerings in Victoria of financial products were available more to institutional or wholesale investors.

20    After the launch event, the replica and MBL’s and the other sponsors’ association with it was promoted by two paid advertisements. There was a wrap-around cover published on 2 March 2019 in the Herald Sun newspaper, including an image of the replica and reference to MBL, HESTA and Cbus. Further, there was a full-page advertisement published on 10 March 2019 in the Stellar magazine, including an image of the replica and reference to MBL, HESTA and Cbus. Copies of the first, second and third invitations, the wrap-around cover and the Stellar advertisement are annexed to these reasons; I will return to them later.

21    Now in this proceeding, SSGA has made various statutory claims that MBL by its conduct engaged in misleading or deceptive conduct contrary to ss 18 and 29(1)(a), (g) and (h) of the Australian Consumer Law (ACL) (sch 2 to the Competition and Consumer Act 2010 (Cth)), trade mark infringement contrary to ss 120(1) and (2) of the Trade Marks Act 1995 (Cth), and infringement of copyright contrary to s 36 of the Copyright Act 1968 (Cth).

22    Further, SSGA has made various tort claims. First, SSGA asserts that MBL engaged in the tort of passing off. Second, State Street (US) has put a case of interference with contractual relations in that MBL induced the artist to breach the agreement that she had entered into with State Street (US) relating to the creation, ongoing use, display and promotion of the New York statue, the Fearless Girl trade mark and the artwork embodied by the New York statue. I will refer to the agreement between the artist and State Street (US) as the “master agreement” and the artwork embodied by the New York statue as the “artwork”.

23    Generally, SSGA has sought to weave its web of statutory and tort claims in such a fashion as to effectively assert monopoly rights in an icon that it does not have. There is considerable disparity between what it paid for and what it now asserts it is entitled to protect. But Australian statute law and tort law cannot fill that gap.

24    For the reasons that follow, I would reject the claims made by SSGA except insofar as the question of the future display of the replica is concerned and whether any disclaimer is required to be used with the replica. I will hear the parties further on such questions including whether any orders need to be made or undertakings given.

25    It is convenient to divide my reasons into the following sections:

(a)    Fearless Girl ([27] to [62]);

(b)    The master agreement ([63] to [75]);

(c)    MBL’s conduct and involvement ([76] to [406]);

(d)    Interference with contractual relations ([407] to [680]);

(e)    ACL claims and passing off ([681] to [955]);

(f)    Trade mark infringement ([956] to [1084]);

(g)    Copyright infringement ([1085] to [1187]); and

(h)    Conclusion ([1188] to [1191]).

26    I should make one other preliminary point. Because of the inconvenience caused by the COVID-19 restrictions, I cancelled oral closing addresses. As a consequence, the parties provided to me extensive written closing submissions that were of considerable assistance.

FEARLESS GIRL

27    Before getting into the detail of SSGA’s claims and the evidence, it is important to make some observations concerning the New York statue and its commissioning, and the master agreement.

28    In 2016, State Street (US) engaged its advertising agency, McCann, to develop a campaign to promote the SPDR SSGA Gender Diversity Index ETF (the SHE fund), which is an exchange traded fund listed on the NYSE’s Arca exchange. The SHE fund tracks against the SSGA Gender Diversity Index, which measures the performance of US large capitalisation companies that are “gender diverse, being companies that exhibit gender diversity in their senior leadership positions. In late 2016, McCann commissioned the artist to help create a bronze statue of a strong and confident girl that would stand opposite the Charging Bull statue at Bowling Green Park on Wall Street in the Financial District of Manhattan, New York City.

29    In the evening of 7 March 2017, State Street (US) installed the New York statue at Bowling Green Park. This was the night before International Women’s Day. A plaque was placed beneath the statue that stated “Know the power of women in leadership. SHE makes a difference” with the SSGA logo. The reference to “SHE” was a reference to both the gender of the girl and the ticker symbol of the SHE fund. I note that the plaque was subsequently removed and replaced with a sign which also referred to State Street (US).

30    To accompany the unveiling of the New York statue, State Street (US) launched an integrated marketing campaign (the Fearless Girl campaign). Installation of the statue was timed to coincide with a public announcement made by State Street (US), in which it called on 3,500 companies in the US, UK and Australia representing more than US$30 trillion in market capitalisation to increase the number of women on their boards.

31    The New York statue was apparently intended by State Street (US) to celebrate women leaders in business, but also to inspire the next generation of leaders in business. Apparently, it was to be a symbol of State Street (US)’s messaging regarding the importance of gender diversity in senior business leadership.

32    The Fearless Girl campaign was widely reported by global news agencies and was discussed extensively on major social media platforms. The Fearless Girl campaign resulted in:

(a)    over 4.6 billion Twitter impressions in the first 12 weeks of the campaign;

(b)    approximately 745 million Instagram impressions in the first 12 weeks of the campaign;

(c)    approximately 2,400 print and digital articles with 140.5 million impressions which involved mentions of State Street (US) and the New York statue in the first three weeks of the campaign;

(d)    1,676 US broadcast mentions of State Street (US) and the New York statue, with audiences of 43.4 million viewers in the first three weeks of the campaign;

(e)    an approximate 650% increase in @StateStreet Twitter handle impressions;

(f)    an approximate 90% increase in views of State Street (US)’s website; and

(g)    an approximate 450% increase in views of the SHE fund webpage on State Street (US)’s website.

33    Further, during the period 7 March 2017 to 4 April 2017, there was an increase in average daily trading volume in the SHE fund of 170%.

34    The media and social media coverage of the Fearless Girl campaign also had a significant impact on State Street (US)’s “share of voice” (SOV), which is a marketing industry measure used to assess the news media exposure a brand gets compared to its competitors. State Street (US)’s SOV in key publications increased from 7.8% for the period from 1 December 2016 to 3 March 2017 to 37.4% for the period from 7 March 2017 to 31 March 2017.

35    In April 2018, State Street (US) and the City of New York announced that the New York statue would be moved to a prominent location in front of the NYSE. The move to the new location was completed in December 2018. The New York statue currently stands in front of the NYSE with a new sign that incorporates State Street (US)’s logo and a description of its purpose.

36    Let me extrapolate from State Street (US) to SSGA more generally.

37    The Fearless Girl campaign has had a measurable impact on SSGA achieving its goal of promoting and bringing awareness to SSGA’s efforts to promote gender diversity in corporate governance.

38    In particular, from the launch of the Fearless Girl campaign until September 2018, 301 of the 1,228 companies which SSGA identified as having no female board members had added a female director, including 21 of the 45 companies identified in Australia. Further, by March 2019, 423 of the 1,265 companies which SSGA identified as having no female board members had added a female director, including 26 of the 56 companies identified in Australia.

39    Further, Fearless Girl has been important to SSGA’s asset stewardship campaign, in particular the board governance initiative to drive greater gender diversity at the corporate level, which is international. Further, there is an annual report which is available to a wide variety of stakeholders.

40    Further, Fearless Girl has been used by SSGA to draw attention to SSGA’s environmental, social and corporate governance investing capabilities, in particular with the SHE fund.

41    In evidence were various marketing and promotional documents of SSGA.

42    First, I was taken to a document titled “Drive Change: SPDR SSGA Gender Diversity Index ETF” published in March 2018, which appeared to have an expiry date of 31 December 2019, concerning the SHE fund. Undoubtedly this was a document used to promote an investment product, structured to promote gender diverse leadership. A selling point was that at the time of its publication, the SHE fund was sold to investors as “the least expensive thematic large-cap US equity ETF in the market today”. On one of the 12 pages is a reference to Fearless Girl and State Street (US)’s placement of the New York statue. This was said to be done “to amplify our message” concerning gender diversity on boards or perhaps a little more broadly women in corporate leadership positions. To be clear, this all had little to do with MBL’s broader campaign themes of equal pay, equal opportunity and gender equality across all levels of employment in all sectors. Further, MBL’s campaign was also directed, inter-alia, to young and younger women, rather than finance or investment types with ready cash to invest.

43    There is also something further to note. SSGA’s audience was substantially companies in the SHE fund, target companies that it was looking to add, and actual or potential investors in the SHE fund. Further, it would seem that only US companies were invested in so far as the fund was concerned.

44    Second, in evidence was an Annual Stewardship Report for 2017, which was published by SSGA in July 2018.

45    I will not go through it in detail, but several features can be noted. There was a photograph of the New York statue on the front cover. And further reference to Fearless Girl was made on pages 42 to 44 (see also page 32) with another photograph. Again, the placement of the New York statue was described as being “to raise awareness about the importance of gender diversity in corporate leadership”.

46    Admittedly, the report has broader themes than this. Further, there was reference to some Australian activity. So, it was said (page 49):

Gender Diversity (Australia, United Kingdom and United States) In 2017, we adopted voting guidelines designed to address our concerns over the levels of gender diversity on boards of companies in Australia, the UK and the US. During 2017, we reached out to 787 companies to share our concerns about the absence of female directors on the board.

In response to our engagement in this area, 152 companies subsequently added a woman to their board. Of these companies, 129 companies (84 percent) were based in the US, 16 companies (10 percent) were Australian and seven companies (4 percent) were from the UK. Consequently, we took voting action against 511 companies for failing to demonstrate sufficient progress on board diversity.

47    In addition to raising awareness of issues concerning gender diversity at a corporate level, another of the purposes of the commissioning of the New York statue was to promote SSGA, its business and its product and service offerings. It achieved this purpose through a coordinated and targeted social media campaign, which tied the launch of the New York statue to SSGA and its gender diversity initiatives.

48    Now SSGA has sought to maintain and protect the integrity of the New York statue and the Fearless Girl campaign’s message. SSGA has granted requests from both within SSGA and externally to use the Fearless Girl image and replicas of the New York statue where there is a clear association between the use of the image and replicas with gender diversity and asset stewardship initiatives. But it has also refused many such requests.

49    Further, SSGA’s continuing public efforts to promote the New York statue since her relocation to the NYSE have included installation of a replica in London, ongoing reporting on SSGA’s overall progress in promoting greater gender diversity at the board level, promotion on SSGA’s websites and frequent social media postings. State Street (US)’s website, for example, contains examples of ongoing use of the Fearless Girl name and image, including a section describing the genesis of the New York statue and the Fearless Girl campaign.

50    I do not need to elaborate further on SSGA’s marketing activities in the US or the reputation that it may have acquired in the US as being associated with the New York statue or Fearless Girl. The more relevant question, particularly concerning the ACL claims and passing off, is its activities and reputation in Australia. On that topic, SSGA is on a much more flimsy foundation.

51    Now SSGA says that it has engaged in extensive marketing and promotional activities in Australia under and by reference to the name and mark “Fearless Girl” in connection with the Fearless Girl campaign that has used images of the New York statue. In particular, SSGA says that it has used Fearless Girl in Australia in various ways, which I accept.

52    First, it has used it in some marketing materials to SSGA’s Australian institutional clients, including in marketing emails and external presentations delivered to a variety of clients including those in the superannuation industry.

53    Second, it has used it in a limited way on State Street (Australia)’s websites, which have included information about the Fearless Girl campaign and SSGA’s asset stewardship initiatives. I will discuss State Street (Australia)’s promotion of the New York statue and the Fearless Girl campaign via its websites in more detail later in my reasons.

54    Third, it has used it in some presentations to researchers, dealer groups and financial advisors.

55    Fourth, it has used it through presentations delivered at some industry events which were attended by financial advisors in the Australian market and prospective clients like superannuation funds, investment companies and banks. It has used it in several presentations directed at the role of women in the financial services industry and in executive positions. It used it in the international keynote presentation at Mumbrella360 in June 2018.

56    Fifth, since March 2017, the New York statue and the Fearless Girl campaign have also been included in some articles published:

(a)    in Australian newspapers such as the Sydney Morning Herald, the Age, the Herald Sun, the Brisbane Times, the Advertiser, the Mercury, and the Canberra Times;

(b)    on Australian financial industry websites such as the Australian Financial Review, Yahoo Finance, Business Insider Australia and Top1000Funds;

(c)    in syndicated media services in regional areas of Australia such as the Gold Coast Bulletin, the Geelong Advertiser, the Perth Now and WAtoday;

(d)    on other Australian news websites such as the ABC News and 9News sites; and

(e)    on marketing industry websites such as AdNews, Mumbrella and B&T.

57    Sixth, in Australia, following the success of its Fearless Girl campaign, SSGA won the 2017 Social Media Campaign of the Year award at the Marketing Advertising and Sales Excellence Awards.

58    I will return to the question of SSGA’s and Fearless Girl’s reputation in Australia later.

59    Let me say something about SSGA’s witnesses.

60    Mr John Brockelman, SSGA’s Global Head of Brand Marketing & Communications, gave evidence that the SHE fund invests in companies that not only have a higher percentage of women at the board level, but also at the senior leadership levels. More generally, he gave evidence in relation to SSGA’s global operations, the development of SSGA’s Fearless Girl campaign including the commissioning of the New York statue, the impact of that campaign, the media attention attracted by the campaign, and State Street (US)’s agreement with the artist, namely, the master agreement. He was cross-examined, and for the most part was a forthright witness. He had significant experience in the field of marketing. But whatever his opinions, the reputation of SSGA, the New York statue and the iconography associated with Fearless Girl in Australia generally and Victoria in particular were really matters for me to determine, even if one clothed some of his opinions as being in the nature of an in-house expert. Further, some of his opinions were in any event problematic for reasons that I will briefly refer to later.

61    I should say that Mr James MacNevin, the Head of Asia Pacific at SSGA, also gave evidence. Mr MacNevin gave evidence in relation to SSGA’s operations in Australia, including some use of Fearless Girl in promotions to SSGA’s clients, in communications via SSGA’s websites, in presentations at industry events and in general marketing used by SSGA. He was also cross-examined, and I found him to be honest and for the most part helpful, although some aspects of his evidence had their difficulties which I will briefly identify later.

62    Other affidavit evidence was also tendered. Ms Rebecca Smith was a solicitor employed by SSGA’s solicitors, Gilbert + Tobin, who attended the launch event on 26 February 2019. She described what she observed, but was not cross-examined. Mr Aditya Vasudevan was a solicitor employed by Gilbert + Tobin who purported to describe how information relating to Fearless Girl was accessible via State Street (Australia)’s website. He was not cross-examined. I will return to his written evidence later.

MASTER AGREEMENT

63    Let me now say something about the master agreement between State Street (US) and the artist and its terms. I will discuss the art agreement between MBL and the artist later.

64    State Street (US) did not enter into a formal agreement at the time of the creation of the New York statue or before its unveiling. Later, on 12 May 2017, State Street (US) and the artist entered into the master agreement, which as I have said related to the creation, ongoing use, display and promotion of the New York statue, Fearless Girl trade mark and the artwork.

65    The master agreement contains terms that granted State Street (US), described in the agreement as SSGA, various rights and limited the artist’s rights. It is necessary that I set out some of these provisions. I should say that generally speaking its terms are confidential. Nevertheless, what I have set out are not sufficiently confidential as to justify not setting them out in a publicly available copy of my reasons.

66    Key terms of the master agreement include the following:

(a)    Clause 1(d) provided:

Artist agrees that any two-dimensional or three-dimensional reproductions of the Artwork that are provided by Artist to any third party as part of any promotional or corporate event, conference, ceremony, banquet, retreat, awards dinner, or the like, shall give attribution to SSGA as follows: “Statue commissioned by SSGA” provided, however, that Artist may request that SSGA waive such attribution requirement with respect to any particular gift or award proposed by the Artist.

(b)    Clause 3 provided:

a)    The Parties acknowledge and agree that SSGA shall have the exclusive right, pursuant to a license set forth in Exhibit A hereto, to display and distribute two-dimensional copies, and three-dimensional Artist-sanctioned copies, of the Artwork to promote (i) gender diversity issues in corporate governance and in the financial services sector, and (ii) SSGA and the products and services it offers. Notwithstanding, Artist is free to discuss issues involving Gender Diversity Goals in connection with the Artwork, provided the Artwork is not used to promote any third party.

b)    All uses not licensed to SSGA hereunder are reserved to Artist, subject to the restrictions set forth in Paragraphs 6, 7, 12 and 13 below.

c)    SSGA may not use images of the Artwork as a “logo,” which the Parties understand and agree is a stylized two- or three-dimensional image used consistently with SSGA’s corporate name, goods, or services to identify SSGA as the source of such goods or services. The Parties understand and agree that the display of the Artwork in photographs or holograms by SSGA, in connection with SSGA marketing communications or otherwise, in any medium or format now known or hereafter developed, shall not be considered use of the Artwork as a “logo.”

(c)    Clause 6 provided:

a)    Artist shall use commercially reasonable efforts to ensure that the Artwork is never exploited under authority of Artist in a manner that could tarnish or dilute the SSGA brand or SSGA’s high-quality reputation.

c)    Subject to the restrictions set forth in Paragraph 7 below, Artist may exploit the Artwork for the following pre-approved uses (the “Pre-Approved Uses”) in a manner consistent with the principles set forth in Paragraphs 6(a) and 6(b)(ii) above:

i.    create an exact reproduction, i.e., a three-dimensional “artist proof” of the Artwork, for auction;

ii.    create, display, and distribute two-dimensional copies of the Artwork for Artist’s portfolio, in all formats and media (e.g. websites);

iii.    create, display, and distribute three-dimensional copies of the Artwork in various mediums and sizes in keeping with the present high quality of Artist’s work;

iv.    create, display, and distribute two-dimensional copies of the Artwork (A) for “fine art” purposes or (B) pursuant to Paragraph 7(c)(i)(B) below;

v.    create, display, and distribute two-dimensional copies of the Artwork in children’s books;

vi.    create, display, and distribute miniature three-dimensional copies of the Artwork as charms, pendants, or other jewelry;

vii.    create, display, and distribute three-dimensional copies of the Artwork in the form of dolls, ornaments, and other three-dimensional merchandise;

viii.    create, display, and distribute two-dimensional copies of the Artwork for merchandise where the depiction of the Artwork is merely ornamentation and not branding.

f)    With respect to any proposed use by Artist that does not constitute a Pre-Approved Use as set forth above, is not set forth in Paragraph 7 below, or is not otherwise set forth herein, the Parties agree to review and discuss them in good faith and SSGA shall provide a response to Artist no more than three (3) weeks from her request. Artist may request an expedited approval process, from time to time, for a two-week review for time sensitive requests.

(d)    Clauses 7(a) to (c) provided:

a)    The Parties acknowledge and agree that use or exploitation of the Artwork by certain third parties, such as third party financial institutions, corporations, or individuals that may not share the Parties’ Gender Diversity Goals may dilute, tarnish, or otherwise damage SSGA, the SSGA brand, Artist’s reputation, or the integrity of the Artwork.

b)    The Parties agree that the Artwork shall never be authorized for use by any third party as a logo or brand, including, without limitation, the display of the Artwork on third party “branded” merchandise (including statuettes) that is designed to promote a third party, its products, or services. … Unless otherwise agreed in writing between the Parties, the foregoing restriction on use for any branding purpose as set out in Exhibit C hereto, shall be incorporated as a condition of Artist’s sale of copies of the Artwork to third parties.

c)    The Parties agree that the following uses of the Artwork do not constitute Pre-Approved Uses and require both Parties’ prior written approval, on a case-by-case basis, such that Artist, Artist’s designated representative, or Artist’s agent, may not knowingly:

i.    sell, license, or distribute copies of the Artwork in any medium or size to any financial institution for any commercial and/or corporate purpose (whether internal or external-facing), such as in connection with a conference, event, ceremony, banquet, retreat, awards dinner of the like…

ii.    sell, license, or distribute copies of the Artwork in any medium or size to any third party to use in connection with gender diversity issues in corporate governance or in the financial services sector; or

iii.    sell, license, or distribute copies of the Artwork in any medium or size to any political party, politician, activist, or activist group…

(e)    Clauses 11(a) to (c) provided:

a)    The Parties acknowledge and agree that SSGA filed an intent-to-use application to register the term “Fearless Girl” as a trademark (the “Mark”) in the United States Patent and Trademark Office (the “US PTO”), and may file further trademark applications to register the Mark in the US PTO, and abroad.

b)    The Parties acknowledge and agree that SSGA is the exclusive owner of the Mark, and will, subject to its good faith business judgment, monitor and police infringement of the Mark worldwide.

c)    SSGA acknowledges that certain use of the Mark by Artist as the name of the Statue may be nominative fair use, or not a trademark use…but use of the Mark on a label, packaging, or advertising or promotional materials in connection with the sale, offer for sale, license, or distribution of reproductions of the Artwork, in any medium, other than as merely and only describing the Artwork as created by Kristen Visbal, shall be subject to the Trademark License Agreement annexed hereto as Exhibit D. For the avoidance of doubt, use of the Mark on labels, packaging, and advertising associated with jewelry, series of books, dolls, ornaments, and other merchandise will require a trademark sub-license agreement, but use of the Mark on art prints that display the Trademark to refer to the Statue does not.

67    At this point I should note that in the preamble clauses to the master agreement:

(a)    the “Statue” was defined as “an original bronze statue for International Women’s Day, which is now known as the ‘Fearless Girl’”; and

(b)    the “Artwork” was defined as “the work of visual art that is embodied by the Statue”.

68    Exhibit A to the master agreement is a copyright licence agreement. I will set out the relevant provisions later in these reasons. Exhibit B is not directly relevant for present purposes.

69    Exhibit C to the master agreement is a “No Branding Provision” and provided:

Except as otherwise agreed between the Parties, the following clause shall be included in all agreements entered into by Artist with all third parties in connection with the use of the Artwork:

The Artwork shall never be used, or authorized for use, as a logo or brand. The Artwork shall never be displayed on “branded” material, in any medium now know or hereafter devised, including without limitation any merchandise, products, or printed or electronic material, that features a trademark, service mark, trade name, tagline, logo, or other indicia identifying a person or entity except for Kristen Visbal or State Street Global Advisors or its affiliates.

Notwithstanding the above “no branding” requirement, a reproduction of the Artwork may be depicted in labels, on merchandise, on packaging for merchandise, and in promotion or advertising collateral, which also display the name of a third-party manufacturer or retailer of the merchandise being promoted/advertised.

70    Exhibit D to the master agreement is a trademark licence agreement. I will set out the relevant provisions later in these reasons.

71    State Street (US) asserts that the master agreement preserves for State Street (US) the exclusive right to use the artwork in relation to promoting gender diversity in corporate governance and in the financial services sector. Correspondingly, it says that the master agreement limits the artist’s ability to deal with the rights in the artwork, particularly in connection with gender diversity issues in corporate governance or in the financial services sector and limits her permitted uses of the Fearless Girl trade mark.

72    State Street (US) says that the master agreement secures subject matter exclusivity for State Street (US) in the New York statue, artwork and the Fearless Girl trade mark in relation to promoting gender diversity in corporate governance and in the financial services sector.

73    Further, it points out that the master agreement also acknowledges that use of the artwork by third party financial institutions, corporations or individuals may dilute, tarnish or otherwise damage State Street (US) and the State Street (US) brand, consistent with the preservation of rights in relation to the financial services sector to State Street (US).

74    Now only one significant construction issue concerning the master agreement has been raised before me. I will dispose of it later.

75    Let me now turn to MBL’s conduct and involvement.

MBL’S CONDUCT AND INVOLVEMENT

76    Let me begin by saying something briefly about MBL’s witnesses.

77    MBL adduced evidence from Ms Hanlan, who was cross-examined. She gave evidence about the development of the MBL campaign from its inception, her contact with the artist, negotiations with the artist and Ms Wolff, broader aspects of the MBL campaign such as obtaining partners, publicity for the campaign and launch event, and events subsequent to the launch event. I will discuss her evidence in more detail in a moment, which was generally reliable.

78    Further, MBL called Mr McDonald, who was also cross-examined. Mr McDonald was a solicitor at Simpsons solicitors, the specialist firm retained by MBL to advise on the purchase of the replica and who represented MBL in these proceedings. He gave evidence concerning his role in negotiating with the artist and Ms Wolff in relation to MBL’s purchase of the replica, and his dealings with Ms Hanlan in relation to the purchase. I will also discuss his evidence in some detail later, none of which was successfully impugned.

79    Further, MBL adduced evidence from Ms Kara Sheehan, who was cross-examined. She was the General Counsel and Company Secretary of MBL. She gave evidence about her limited role in relation to the purchase of the replica. There was no reason to doubt any of her evidence and it was not meaningfully challenged.

80    Further, MBL adduced expert evidence from Mr Geoffrey Edwards, who was cross-examined. Mr Edwards was a freelance consultant and adviser on sculpture to public and private collections throughout Australia. Mr Edwards had been the Senior Curator of Sculpture at the National Gallery of Victoria and later, Director of the Geelong Art Gallery. He gave evidence about how works produced in editions (multiples) were referred to or titled, and the connection between the commissioning of a work and the work itself including how the work was generally viewed or treated. Mr Edwards addressed these issues to the New York statue. I had no reason to doubt any of the opinions that he expressed although his evidence had its obvious limitations which I will discuss later.

81    Finally, MBL adduced evidence from Mr Sebastian Tonkin, who was a solicitor at Simpsons. He had compiled various articles in the media concerning the statue, and USBs containing a video presentation about the New York statue and a recording from the launch event.

82    Let me at this point discuss in detail the evidence given by Ms Hanlan and Mr McDonald, the subject matter of which goes principally to the claim concerning the tort of interference with contractual relations.

The dealings involving Ms Hanlan

83    Ms Hanlan was the National Brand and Social Media Manager at MBL from 2012 until August 2019. Her previous roles included being a Senior Manager, Corporate Brand Usage and Management at Standard Chartered Bank (Singapore) in 2011, Group Marketing Manager at Shape Australia from 2009 to 2010 and National Brand Manager at Australia Post from 2006 to 2009.

84    As the National Brand and Social Media Manager, Ms Hanlan was responsible for overseeing MBL’s marketing, communications, advertising and media requirements. Her team was responsible for implementing MBL’s advertising campaigns directed at prospective clients in its practice areas, like employment and personal injury law.

85    One of her key objectives was to maintain MBL’s reputation as a leading law firm, not just for individual plaintiff claims but in the area of social justice more broadly. To this end, as well as direct marketing efforts directed to prospective clients, her role involved the development and execution of broader campaigns intended to elevate MBL’s brand and reach audiences outside its ordinary client base. She said that whilst it was desirable for these brand campaigns to intersect in some way with MBL’s existing practice areas, the main focus was for MBL to participate in, and be seen to be participating in, conversations of relevance to the broader public and media.

86    She said that gender equality had long been a key value of MBL. MBL had advocated, both on behalf of its clients and independently, on the issues of workplace sexual harassment, gender discrimination in hiring and the gender pay gap. MBL worked, together with union clients, throughout the 1950s and 1960s on issues relating to equal pay leading up to 1972, when the principle of equal pay for equal work became law. Apparently, MBL itself had a particular internal focus on diversity and inclusivity in hiring decisions. MBL regarded itself as a leader in this field in legal and broader commercial circles.

87    In late 2017, she had a discussion with Ms Liberty Sanger, one of MBL’s principal lawyers who had recently been appointed as chair of the Victorian Government’s Equal Workplaces Advisory Council, about whether MBL should consider focusing on workplace gender equality issues and try to bring about change in that area.

88    Ms Hanlan then engaged Mr Pharaoh to conduct research into how the media portrayed gender equality issues. The purpose of commissioning Mr Pharaoh to do this research was to understand how equal pay issues were being discussed and framed in the media and how MBL might progress this cause.

89    The development of the campaign began with discussions between Ms Hanlan and external consultants with expertise in relation to the creation and strategy for advertising or community campaigns. Ms Hanlan had a prior relationship with Ms Chaudhuri. She also had a prior relationship with Mr Carl Ratcliff, formerly head of strategy for One Green Bean (OGB).

90    In early January 2018, Ms Hanlan had a phone call with Ms Chaudhuri about the starting point for a campaign and sent her an email setting out her thoughts. At that stage Ms Hanlan envisioned a broad campaign in relation to gender equality in the workplace encompassing issues of workplace safety, workplace equal opportunity and representation, which Ms Hanlan referred to as gender parity and wage equality. According to Ms Hanlan, building a campaign with the aim of improving workplaces for women would align with MBL’s values and core client base.

91    One of the central pillars of Ms Hanlan’s proposal was wage equality, also known as the gender pay gap. According to her, the gender pay gap was an issue that had been bubbling along for some time and was by then gaining some momentum in the media. She thought that a campaign to highlight the issue and make people more aware of it, with a call to the Victorian government to take more enforcement action, was worth considering.

92    By mid-March 2018, Mr Ratcliff, Ms Chaudhuri and Ms Hanlan had developed some ideas for an equal pay campaign and decided that they needed to commission some research to assist them to identify key messages and language for the campaign. Ms Hanlan engaged the research company Forward Scout to undertake qualitative and quantitative research to inform and develop MBL’s strategic approach to the gender pay gap.

93    In mid-April 2018, Forward Scout prepared an initial report on its qualitative research in mid-April 2018 followed by a more detailed research debrief in May 2018.

94    By mid-to-late April 2018, Ms Hanlan had the benefit of Mr Pharaoh’s report on how the media had presented gender pay equality issues and Forward Scout’s qualitative research findings, so she wanted to find a way to leverage those findings into a campaign that would be of interest to the media. The reason for needing media interest in the campaign was so that the campaign would get attention and generate more discussion, which would then hopefully generate more calls for change.

95    Ms Chaudhuri created a creative proposal setting out the vision for the campaign, based on what they had learned from the research and their discussions to date.

96    Ms Chaudhuri’s proposal suggested the campaign would have several assets, being discrete elements that would each contribute to the overall campaign. These were a “campaign film”, a microsite (meaning a small, topic-focused website), a moment (being, a day on which the campaign would hit the public in a newsworthy way) and a partner pack (to encourage other organisations to support the campaign). The campaign would also ask the community to commit to the cause by signing up to a pledge. Under moment, Ms Chaudhuri’s presentation suggested an event on Equal Pay Day in September 2018. Her suggestion was that they would collaborate with an Australian sculptor and create a statue to unveil on Equal Pay Day. Her report included a picture of a statue. The intention was that the statue would embody the concept of a life-size woman standing next to a stack of notes representing the exact amount that women were paid less than men that year. That figure was to be based on statistics released by the Australian Government’s Workplace Gender Equality Agency (WGEA). The picture in Ms Chaudhuri’s presentation was indicative only and Ms Hanlan did not expect the ultimate statue would look like that. Ms Chaudhuri’s presentation also included a name for the campaign, namely “We’ve Earned It”.

97    Ms Hanlan and Ms Chaudhuri were still considering possible dates for the launch of the campaign and were factoring in other key dates of relevance to the campaign, being:

(a)    the Victorian election cycle, with the election scheduled for 24 November 2018; and

(b)    Equal Pay Day, being the date on which the WGEA published its data about gender pay equality, expected in around September 2018.

98    At around that time, Ms Hanlan engaged an external public relations company, Callidus PR, to work with them on the campaign. She knew Ms Louise Nealon, who worked at Callidus PR.

99    In early May 2018, Ms Hanlan met with Ms Nealon and others for a discussion about the campaign. Ms Chaudhuri presented an updated version of the creative proposal and a treatment for the campaign film. Ms Nealon presented a proposal for a PR strategy.

100    Ms Hanlan presented the research and the campaign ideas to a small group of key people within MBL, including Ms Sanger.

101    Ms Hanlan also contacted Mr Michael Harms at Consumedia, MBL’s media buying agency, to enlist his support for finding potential partners for the campaign. Mr Harms was well-connected in the media industry and she thought he would be well-placed to introduce them to potential partners. She told Mr Harms that MBL wanted to approach companies that had signed up to the WGEA and therefore were already aligned with the purpose of the campaign. She sent him a list of WGEA accredited brands that included companies in a wide range of industries.

102    Later in May 2018, she had a discussion by email with the creative team about whether and when to go ahead with commissioning a statue and where it might be located. She had hoped that it would be located in the Melbourne CBD, somewhere with high foot traffic and befitting of a symbol of such an important issue.

103    At around this time in late May 2018, Mr Pharaoh drafted an overview document for the purpose of asking the Victorian Parliament to approve placement of a statue on Parliament grounds. Mr Pharaoh also developed wording for communications to several municipal locations seeking permission to have a statue erected in one of those locations.

104    On 8 June 2018, MBL was notified that placement of a statue in the gardens of Parliament House would not be possible. Ms Hanlan’s focus then turned to the City of Melbourne Council and as she thought it, in particular the Lord Mayor, Ms Sally Capp, would be able to assist in finding a similarly prominent public location.

105    In early June 2018, Ms Hanlan started contacting artists, by email or by phone, about commissioning a statue. Ms Hanlan mentioned the New York statue in some of these communications. Whilst she did not consider that the New York statue would be generally known to the public, she did think that it would likely be known to artists involved in public art and sculpture. By referring to it, she was trying to convey the general idea that they were seeking an artwork to symbolise a social issue in an easily understood (not abstract) way.

106    From around June 2018, Ms Hanlan was also searching for a media partner for the campaign. A media partner provided more than just advertising space. It provided a platform to spread content via many different channels, including editorial and PR, as well as advertising space. The campaign team ultimately came to the view that a partnership with News Corp in Victoria, publisher of the Herald Sun newspaper, might be more valuable and expose the campaign to a broader audience than a partnership with Fairfax, then the publisher of the other major Victorian daily newspaper, the Age.

107    Ms Hanlan could not recall when or how she first heard about the New York statue, but she believed that when she did first learn about it, she only took in its appearance and its name, Fearless Girl, and that it had been installed opposite the statue of the Charging Bull in support of gender equality on International Women’s Day in 2017. In around October 2017, she read in the media an article that the company that commissioned the New York statue had settled a dispute in relation to allegations that it had underpaid its female staff. She believed that was the first time she became aware of the identity of the commissioner of the New York statue, although the name of the commissioner, State Street, meant nothing to her at the time.

108    In around early June 2018, she raised with her creative team whether they should investigate whether they could buy a replica of the New York statue for the campaign. She did not consider, nor did anyone else in her team suggest that they considered, that Fearless Girl was already associated with another company or a particular industry. She thought it was worth considering further so she set about trying to find out who the artist behind the New York statue was and how she could contact him or her.

109    She read an article by Danielle Wiener-Bronner for CNNMoney (New York) titled “‘Fearless Girl’ artist wants her message spread beyond Wall Street”, first published online on 19 April 2018. Having read that article, she understood that:

(a)    Ms Kristen Visbal was the name of the artist who had created the New York statue;

(b)    the artist was offering for sale replicas of the New York statue;

(c)    the artist had already sold three replicas, one of which had been unveiled in Oslo, Norway;

(d)    the artist wanted the replicas to be placed in public places “so that the statue can continue spreading a message of gender equality”;

(e)    State Street (US) held the Fearless Girl trade mark;

(f)    State Street (US) was not involved in the replicas;

(g)    Fearless Girl had been criticised in relation to State Street (US)’s settlement of allegations that it underpaid its female and black employees; and

(h)    the artist saw Fearless Girl as a “much-needed symbol” and said “[t]he message may have begun as a statement about Wall Street [but the statue] has taken on a life of her own”.

110    Upon reading that article, she was hopeful that MBL might be able to purchase a replica.

111    By the time she decided to contact the artist, Ms Hanlan and her team had been working on the campaign for nearly six months. As far as she can recall, in all of that time she did not ever suggest, nor did any else suggest to her, that the campaign focus on pay inequality or gender diversity in the financial services industry over any other industry, or on pay inequality or gender diversity of company’s boards. Indeed, she always intended that the campaign be a broad campaign across a wide range of industries and at all levels of seniority to maximise the number of people who might be interested in the campaign and bring about real change.

112    On 7 June 2018, she sent an email to the artist. At the end of the email she said to the artist that she wanted to assure her that MBL’s planned campaign and its use of the replica would not be a “corporate branding exercise”. She said this because she wanted to convey to the artist that MBL was an organisation that was genuinely committed to promoting equal pay and workplace equality, and that MBL was not seeking to use Fearless Girl as an advertisement for its services.

113    On 12 June 2018, she sent a follow-up email to the artist as she had not received a response from her. In her response later that day, the artist stated that Australia was on her list for potential placement of the work.

114    Following that email correspondence, Ms Hanlan had a telephone conversation with the artist on 13 June 2018. The conversation lasted for approximately 40 minutes. In that call, Ms Hanlan told the artist about MBL. She recalled saying to the artist words to the effect of:

(a)    MBL is one of Australia’s leading social justice law firms;

(b)    when Maurice Blackburn started the firm nearly 100 years ago, his goal was to help ordinary Australians access the law;

(c)    Maurice Blackburn’s goal to provide access to justice for all Australians, not just those who can afford it, was still very much the driving force behind the firm; and

(d)    MBL was heavily involved in cases involving workers’ rights, asylum seeker rights, gender equality, and workplace discrimination.

115    Ms Hanlan told the artist about the campaign that MBL was planning. She recalled saying to the artist words to the effect of:

(a)    MBL wanted to launch a campaign about wage equality;

(b)    Ms Sanger was keen to help drive change in this area and that she would be MBL’s spokesperson for the campaign; and

(c)    MBL was looking to build a coalition of organisations who would support the campaign. She said that they wanted the campaign to be bigger than just a MBL campaign and that with more organisations involved the campaign would reach a wider audience. She could not recall whether she specified the identities of the organisations or the types of organisations that she had hoped would be in the coalition.

116    She told the artist about the intended timing for the campaign. She said to the artist that they were planning to launch the campaign on Equal Pay Day in August or September 2018, and she said that Equal Pay Day was significant because it represented the additional days in the next financial year until Australian women’s wages reached the same level that Australian men had earned in the previous financial year.

117    During that call, the artist said to Ms Hanlan words to the following effect:

(a)    she had made Fearless Girl and that the statue was important to her because her goal was to bring about equality between men and women, and she saw Fearless Girl as an inclusive symbol and that it was not about excluding men from the conversation, but creating a better society where both men and women were equally valued;

(b)    she liked the idea of Fearless Girl being associated with an equal pay campaign;

(c)    State Street (US) had unveiled the New York statue and had acquired two additional replicas, although it later became apparent that State Street (US) had acquired three additional replicas;

(d)    she thought one of State Street (US)’s replicas was planned for London and the other was planned for Tokyo or Hong Kong;

(e)    she thought the power of the Fearless Girl message would be strengthened if it was not connected with just one organisation, but with a wider range of organisations. Ms Hanlan assumed the artist’s reference to “one organisation” meant State Street (US) as she had just told her that it had unveiled the New York statue and had acquired two more replicas;

(f)    she owned copyright in the artwork;

(g)    State Street (US) owned a trade mark; she did not;

(h)    she wanted to sell replicas of the New York statue to spread the word about gender equality;

(i)    she had sold a replica to a hotel in Oslo, Norway and that it faced the parliament building there;

(j)    she was in talks with a boarding school in Africa about creating a replica for that school;

(k)    she had been previously contacted by Plan International Australia, an Australian charity that works to improve children’s rights and equality for girls, but it had decided not to purchase a replica due to the high cost;

(l)    the cost of a full-size replica was US$250,000, which she acknowledged was expensive, and said that there could be no negotiation on the price; and

(m)    the replica had to be pitched as a gift to the Australian people and it had to be installed in a public place.

118    As far as Ms Hanlan can recall, the artist did not tell her that she had an agreement with State Street (US), or that she was under any limitations or restrictions as to what she or a purchaser could or could not do with the replicas, other than she had mentioned State Street (US)’s trade mark.

119    Based on that telephone conversation with the artist, Ms Hanlan was left with the impression that she had plans to expand her message of gender equality around the world and that she was already gaining momentum through sales of the other replicas. As regards her statement that the replica must be “a gift to the Australian people”, Ms Hanlan understood that the artist did not want replicas of the New York statue to be promoted as being owned by a company and that they must be installed in public places.

120    After having made contact with the artist and confirmed that MBL could, in principle, purchase the replica for the campaign, the most pressing task was to find other organisations to support the campaign. In around mid-June 2018, the creative team and Ms Hanlan pulled together a long list of potential contacts and companies to approach regarding the campaign. The list included companies and contacts operating in the following fields: professional services, accountancy, property, energy, superannuation, private health funds, retail banking, legal, education, construction and other industries.

121    Ms Hanlan and others from the core campaign team started having conversations with their contacts at potential partner organisations. On 18 June 2018, Mr Pharaoh confirmed to her by email that HESTA had indicated that it would join the campaign.

122    Also on 18 June 2018, the artist sent her an email which repeated some of the comments she had made during their earlier phone conversation. The email stated:

I am very excited at the prospect of placing Fearless Girl in Melbourne and the figure couldn’t be more perfectly suited to your event. As we discussed, formally speaking, Fearless Girl stands for supporting women in leadership positions, equality, equality of pay, education of women, education in the work place for the prevention of prejudice and the general well being of women. Marking the day when women work for free certainly will drive home the discrepancy in pay between men and women. Fearless Girl is a perfect fit.

As discussed, I am quietly creating and placing a limited edition of 25 of the full size Fearless Girl. We unveiled her in front of the Grand Hotel in Oslo, Norway last March and she faces the Parliament building. Another European unveiling is scheduled for October and, in August, we will unveil at a boarding school representing 27 countries. Three other unveilings are scheduled. I am targeting public placement, educational facilities or corporate campuses in order to continue to spread the messages behind Fearless Girl as well as the key message of the enlightened path forward as being the collaboration between men and women for better decisions and a better environment.

State Street Global Advisors of Boston, Massachusetts owns the trademark for supporting women in leadership positions under the Fearless Girl name. I own the copyright on the work. The Australian coalition is able to freely announce that the sculpture has been gifted to the people of Australia. The restriction is that the group would not be able to use the figure as a brand identity.

With 6 parties chipping in for purchase, I think your group could make a dream of the Plan International group come true! I would be happy to speak with you and others in the coalition on the phone again once you’ve had the opportunity to digest all of this. Regarding trademark, if you have any questions, we can also schedule a call with my lawyer Nancy Wolff.

123    The artist’s email attached a draft agreement and some notes for purchase that the artist’s lawyer had drafted for another client. This draft agreement subsequently became what I have described as the art agreement. Ms Hanlan skimmed the draft art agreement at the time, but she does not recall reading it or the notes for purchase carefully as she knew that she would be asking a lawyer to review them and advise her. She did recall that she formed the impression that MBL would not be able to “lock up” the Fearless Girl name or image with its brand or logo. Lock up is a marketing term; it involves taking one element (a name, logo, symbol or picture) and mixing it with another element (name, logo, symbol or picture) to create a new lock up, or brand. In this context, she thought they could not use the image as part of MBL’s trade mark, nor could they advertise, for example, “Maurice Blackburn Fearless Girl legal services”. She considered that would not be a problem as she had no intention of doing that. It was never her intention that the replica would be used to advertise MBL’s legal services or as a brand for MBL. The replica was solely for use as part of the MBL campaign.

124    On 18 June 2018, she also received the quantitative debrief of Forward Scout’s research. The next step was for that research to form part of a corporate engagement, white paper-style report to a range of corporations in order to seek their engagement with the campaign.

125    On 20 June 2018, and before she had sought any legal advice or input on the documents the artist had sent to her, Ms Hanlan sent an email to the artist. In that email she told her, inter-alia, that MBL was looking for coalition members for the campaign, including global consulting firms, superannuation funds, City of Melbourne Council, health fund providers, unions and financial services. In relation to superannuation funds, Ms Hanlan explained her justification for their identification in terms of “as they are big supporters [of] women planning for their financial future etc”.

126    The artist responded on the same day and said “This rounds to the picture for me quite well”. The artist also said “Please let me know if you or your legal team needs to schedule a call with my lawyer Nancy Wolff”. After reading that email, the impression Ms Hanlan had was that the artist was happy with their proposed campaign and they could move forward.

127    On or around 21 June 2018, Ms Hanlan approached Ms Sheehan, who had just started in the role of General Counsel at MBL, about the campaign and the draft art agreement. She asked her whether Ms Sheehan would review the draft art agreement herself or whether she would brief an external lawyer. During that discussion or in a subsequent conversation shortly afterwards, Ms Sheehan told Ms Hanlan that she thought this matter should be dealt with by a specialist lawyer.

128    A friend of Ms Hanlan’s had, until shortly before that time, been employed as a lawyer at Simpsons. Through her, Ms Hanlan knew that Simpsons specialised in arts law and she asked her friend for the name of a person that she could contact to assist her with the review of the draft agreement. On 22 June 2018, she sent her an email introducing Ms Hanlan to Mr McDonald.

129    Ms Hanlan then emailed Ms Sheehan with Mr McDonald’s details, copying him in. Separately, she sent Ms Sheehan an email briefly outlining what she saw as MBL’s requirements for the purchase, including what she wanted to be able to do with the replica.

130    Shortly afterwards, also on 22 June 2018, Ms Hanlan was copied on an email from Ms Sheehan to Mr McDonald in which she attached the draft art agreement and the notes for purchase that Ms Hanlan had received from the artist as well as a copy of Ms Hanlan’s earlier email to her outlining MBL’s requirements.

131    Ms Hanlan wanted to ensure that MBL could use the replica for the purposes of the MBL campaign. Whilst she had not made a final decision about every element of the campaign, she did at that time know that MBL would want to install the replica in a public place and use the replica and its image as part of the campaign. It was never her intention that the replica would be used to advertise MBL’s legal services or as a brand for MBL. The replica was solely for use as part of the campaign. Given the significant cost of the replica and its part of the campaign, she needed to guarantee that they could use it for the planned purposes. If they could not use it for their purposes there would be no point in continuing to negotiate an agreement with the artist to purchase the replica.

132    On 27 June 2018, she received an email from Mr McDonald attaching his comments on the draft art agreement.

133    On 29 June 2018, she emailed Mr McDonald and asked him “So we’re happy that we’d be able to use the fearless girl the way we needed to and also for our partners?”. She asked that question because, whilst by that stage she had skimmed the draft art agreement, she didn’t feel qualified to comment on the drafting of the clauses. She simply wanted to ensure MBL could use the replica for the purposes of the campaign.

134    Later that day, Mr McDonald responded to her question, saying that:

Our deletions to subclause (1) of the clause on page 4 in relation to “No-Branding Use” remove the issue about referring to the work in (among other things) MB or other newsletters or on an MB website, each of which would clearly be branded with the firm’s name and logo.

The additional wording after subclause (3) is to remove any ambiguity as to what MB or the co-contributors are permitted to do with the work, but let us know if there is anything extra you want to specify here. Note also our comment inserted as “IMcD3” at the end of subclause (2), including that MB may want to negotiate for the deletion of this subclause.

The amendments we have suggested reflect our instructions, but we particularly look forward to your assessment of whether there is anything else that should be included (or excluded) here.

Kara: particularly look forward to any comments from you on this or any of the other amendments we have suggested.

135    Later that afternoon, Ms Sheehan emailed Ms Hanlan and suggested that she call Mr McDonald to discuss his queries. At that time, Ms Hanlan was overseas so rather than calling Mr McDonald, on 3 July 2018, she emailed him and Ms Sheehan.

136    In an email, she wrote that the no branding use clause was her “biggest concern” and suggested that it should be removed or clarified. She said this because she did not really understand the wording of that clause and, more specifically, she wanted to be sure MBL would be able to partner with superannuation funds, which she assumed would be considered financial services companies. Her email stated:

My responses to the specific questions are below- can you review and forward to Ian. I’m in Greece at the moment so not picking up my v/m

    the cost and payment schedule (p.2) – I agree a % should be held back until delivery;

Happy for you to make a recommendation on this

    the no branding use (p.3) – see comments re (2) – do you or the potential contributors have any issues with the limitation?;

as per my earlier email this is my biggest concern – I think we need to ask her if we can a) remove it or B have her explain what the intent is here ie what is corp governance and what is fin service s- we will have superannuation providers contribute and are they tech fin services etc

    Credit (p.3) – Ian’s proposed clause looks ok, but if you want MB’s logo and contributors logos on the plaque, can you let Ian know?;

I want to make sure that we can put our logos on the plaque – MB and any other contributors – this is very important as we need to be able to show who has brought the girl to Melbourne and why.

    Photography (p.5) – do we want the artist to provide a photographer or will we have our own at the Event?;

Part of the offer is that the artist will include the McCann photographer who did the work for the NYC fearless Girl – this ensures consistency in creative presentation.

137    Mr McDonald replied to her stating that he would make changes to the draft art agreement in light of her comments. There were then some further emails between Mr McDonald, Ms Sheehan and Ms Hanlan regarding the payment schedule in the draft art agreement.

138    On 4 July 2018, she received another amended version of the draft art agreement from Mr McDonald and, in a separate document, a table that she had requested explaining the amendments he had made. She did not recall looking at the draft art agreement but she did look at the table of amendments as she wanted to be sure that they were telling the artist how MBL wanted to promote the campaign and the replica. Shortly afterwards, Ms Sheehan emailed Ms Hanlan to say that Mr McDonald’s documents looked fine to forward on to the artist.

139    On 4 July 2018, Ms Hanlan sent Mr McDonald’s revised version of the draft art agreement and the table of amendments to the artist.

140    She received emails from the artist on 5 and 10 July 2018, in which the artist, inter-alia, said that she had provided the documents to her lawyer, namely, Ms Wolff, for review.

141    On 14 July 2018, Ms Hanlan received an email from the artist copied to Ms Wolff attaching a revised draft art agreement. The email stated:

We did note that your legal team removed the no branding clause which we have replaced. I am under contractual obligation with State Street to include that language in our agreement and the clause will have to remain. For your protection, any promotion of the work and your event should emphasize that the work is a “gift” to the people of Australia and is being used to highlight the 15.3% gender discrepancy in pay. The required no branding clause would prohibit logo use in conjunction with the work but, certainly, the name of each and every contributor should be clearly spelled out.

Remember that Fearless Girl stands for supporting women in leadership positions, equality of women, equal pay, education of women, education in the work place for the prevention of prejudice and the general wellbeing of women. I am thrilled you are planning to tour with the work but, ask that in all cases she be used to promote these same gender diversity goals.

In regard to relative size of the artwork, Fearless Girl is 50 inches high and I am 5’9”.

Note that Fearless Girl is being produced in a limited edition of 25 as we discussed but, I also will make two Artist Proofs which will travel on loan. The Artist Proofs have been noted in the agreement.

On page 5, we’ve asked that I be apprised of the ceremony plans and that mention of the initial casting placed by State Street in New York. If I am speaking, I will handle that aspect.

142    She did not recall reading the revised draft art agreement on the basis that MBL’s lawyer would be dealing with that, but she did read the covering email. She recalled reading the artist’s comments that she was under an obligation with State Street (US) to include certain language in the draft art agreement, but Ms Hanlan did not understand the artist to be telling her that MBL could not use the replica in its campaign as planned. Ms Hanlan took the artist’s comments to mean that there would need to be some changes to the wording of the draft art agreement but that she was happy to go ahead with the sale to MBL.

143    Ms Hanlan saw the artist’s comment “The required no branding clause would prohibit logo use in conjunction with the work but, certainly, the name of each and every contributor should be clearly spelled out” and she wanted to clarify what she meant by that. Ms Hanlan expected MBL would want to use its logo and the logos of its partners in connection with the campaign, including on the plaque.

144    Ms Hanlan understood that the replica should be used to promote the gender diversity goals listed in the artist’s email, being “supporting women in leadership positions, equality of women, equal pay, education of women, education in the workplace for the prevention of prejudice and the general wellbeing of women”. Whilst MBL’s campaign was focused on gender pay parity, Ms Hanlan considered that all of the goals identified by the artist were parts of the same puzzle and that promoting each of those goals would assist with the aim of achieving equal pay.

145    Ms Hanlan was fine with the artist mentioning in her speech that the New York statue had been commissioned by State Street (US).

146    Ms Hanlan forwarded the artist’s email to Ms Sheehan on 17 July 2018. Ms Sheehan responded on 18 July 2018 to say she would have Mr McDonald review the amendments to the draft art agreement. The email stated:

I will ask Ian to look at this, but one thing I want to point out is the changes around use of the statue with branded material.

Below is a highlighted clause of what has been inserted, which will prevent us from using images of the statue on branded material – based on this wording we will not be able to use the image on our branded website or in brochures.

The artist says this is based on its contractual arrangements with State Street.

If not sure if this is going to be acceptable – can you please have a think about it?

I’ll copy you into my correspondence with Ian.

(1) The Artwork shall never be used, or authorized for use, as a logo or brand or on or in merchandising. The Artwork shall never be displayed on “branded” material, in any medium now know or hereafter devised, including without limitation any merchandise, products, or printed or electronic material, that features a trademark, service mark, trade name, tagline, logo, or other indicia identifying a person or entity except for Kristen Visbal or State Street Global Advisors or its affiliates.

(2) The Artwork may not be used in connection with gender diversity issues in corporate governance or in the financial services sector.

(3) The Artwork may notbe used by the Client for the promotion of any political party, politician, activist, or activist group.

For clarity, however: nothing in this clause prevents the Client or co-contributors to the cost of the Artwork from:

a. talking about the Artwork (including why it was purchased, what it represents to them, who has partnered with the purchase and how their purchase of the Artwork supports gender diversity goals); or

b. taking the Artwork on a roadshow within Australia and showing and discussing the Artwork in public (and particularly in regional and rural schools and communities).

147    Ms Sheehan drew her attention to wording in the draft art agreement that she thought would prevent MBL using images of the replica on its website or in brochures and asked her to consider if that would be acceptable. After reading Ms Sheehan’s email, Ms Hanlan thought that they needed to be really clear on how MBL wanted to promote the replica. Ms Hanlan thought that the best way forward was to put the onus back on the artist and set out in the draft agreement what MBL wanted to do with the replica to check if she would permit those uses.

148    On 18 July 2018, Ms Sheehan sent the artist’s email and attachments to Mr McDonald, copied to Ms Hanlan. The email stated:

Please see the attached response. Could you please review for us?

Rebecca is going to let us know her views on the changes to the branding clause – this may be a problem for us. Apart from this, can you please advise of any other significant changes?

149    Ms Hanlan followed with an email requesting clarity on what would be permitted under the revised draft art agreement.

150    Later that day, Mr McDonald responded saying that he thought the amendments would be “tricky” for MBL and its campaign partners, and suggested that Ms Hanlan provide examples of the ways in which MBL and its campaign partners would want to use the replica. He stated the following:

My initial reaction, however, is that the clause she (or State Street) is insisting upon is going to be tricky for you and the other organisations, and perhaps one way to respond might be to give examples of what you want to do and ask whether these would be OK under her view of the clause.

151    Sometime in the week commencing 23 July 2018, Ms Hanlan had a telephone conversation with the artist. Ms Hanlan could not recall the date of that call and she does not generally make file notes of her calls. However, she did recall some matters. The artist told her words to the effect that MBL would not be able to use the replica in a way that adopted Fearless Girl as its own brand or the brand of a campaign partner. Consistent with Ms Hanlan’s earlier views, her take on this was that MBL was not permitted to lock up its logo with the replica or images of it or use the words Fearless Girl to advertise its products or services. Ms Hanlan said to the artist that MBL intended to use the replica as part of its campaign, including promoting it on social media, putting it on the MBL website, using it in internal communications, creating a press release and promotional materials for an event or events and touring regionally and, potentially, nationally. Further, Ms Hanlan said that MBL had no intention of using the replica or the words Fearless Girl on products or to advertise its legal services. And the artist said to Ms Hanlan that she thought that should be fine.

152    Ms Hanlan was left with the impression that the artist understood how MBL and its campaign partners intended to promote the replica as part of the campaign and did not view that as problematic. She had been very explicit about MBL’s plans. The artist did not say to her that she had any issues with what Ms Hanlan had said.

153    By this time, Ms Hanlan and her creative team had made approaches to potential campaign partners in a wide range of industries. She was aware that conversations were ongoing with several organisations who had indicated some interest in the campaign, but at that stage only HESTA had committed to joining. It was taking longer than she had hoped to find partners for the campaign and she was becoming concerned that the timeframe for a planned unveiling of the replica and campaign launch on Equal Pay Day (September 2018) was becoming too tight, so she started considering later dates.

154    On 27 July 2018, she sent an email to Ms Felicity Pantelidis, MBL’s Deputy CEO, summarising the campaign and asking for her assistance to approach potential partners for the campaign. In the email to Ms Pantelidis, she noted “This campaign would be promoted by the Equal Pay Potential coalition - (not a ‘Maurice Blackburn’ campaign)”.

155    On 27 July 2018, Ms Hanlan sent an email to Mr McDonald copied to Ms Sheehan stating:

Hoping we can set up a meeting with you on Monday at 2pm to talk through the different scenarios of how we want to use Fearless Girl so we can get some clarity from Kristen. Ill prepare the examples over the weekend and email them over and then we need to be able to get your thought son them based on your understanding of the agreement and then share them with Kristen. She rang me earlier this week and thought it should all be fine but we need to be sure! Im trying to finalise partners and need to be sure we can use her in mkting and comms and PR.

156    Following Ms Hanlan’s further emails to Mr McDonald on 27 and 28 July 2018 in which she explained the ways in which she wanted to be able to use the replica as part of the campaign, she had a telephone call on 30 July 2018 with Mr McDonald. On that day, she sent an email to Mr McDonald stating:

For today’s discuss I’ve tried to provide examples of where (platforms /channels) we might communicate Fearless Girl, the sort of copy we might use and the imagery we may use to support it.

Ian I still don’t understand what the reference to not using financial institutions means – does that mean we can’t have a bank or a superannuation provider be a partner with us? Can you please explain this? At this stage we have Super funds on board and we are talking to NAB too.

Timings

I have a drop dead date of Aug 10 to order her so we need to sort this out this week. Kristen is in Africa at the moment but Id like us to email her by COB today if possible.

Plaque

Have organisations logos on plaque eg

Equal Pay Potential Project

Maurice Blackburn Lawyers logo along with our partners logos (up to 6 in total approx.)

Social Media /Websites/Press Release

Use image of Fearless Girl on social media platforms – LinkedIn, FB, Twitter, Insta

Use of image of Fearless Girl on company website

Use of image of Fearless Girl used on press release around Equal Pay day

Copy

[And] creative executions could include something such as the below (tailored by each of the partners to reflect their own brand first)

MB as part of the Equal Pay Potential project are proud to be part of a campaign promoting gender pay equality. As part of this campaign MB along with its other partners have brought Fearless Girl to Australia as a commitment to championing this very important cause.

Imagery

Fearless Girl – insitu (ie wherever we unveil her on equal pay day)

Fearless Girl flanked by the CEOs of the organisations who have contributed to her coming to Australia

My understanding is that we can’t lock up our logo (or any of the other partner logos) with the image of the girl – which seems fair and reasonable.

157    Later that day, Mr McDonald emailed her a further revised version of the draft art agreement stating “… please see attached for our revised version of the agreement, spelling out each of the things that you want to be able to do despite the “no branding” clause”. She recalled looking at that version of the draft art agreement. She wanted to make sure that Mr McDonald had accurately included the different ways MBL wanted to use the replica. After reviewing the amendments, on the same day she forwarded it to the artist by email stating:

How’s Africa going?! We have updated the contract by inserting examples of how we would like to use the girl in respect to promotion. If we can agree on this quickly then we can keep everything moving in time for September (date still not confirmed!) – these examples are fairly predictable in terms of how we would want to promote our investment in the girl across our websites, social platforms and PR. I’m expecting 4-6 (max) partners how would all want to promote the girl in this manner. We would also want all of their logos on the plaque. We will be positioning this as a ‘gift’ to the Australian people (women) to champion this issue of wage equality.

158    On 31 July 2018, Ms Hanlan received two emails, one from the artist and one from Ms Wolff.

159    The artist’s email stated:

That is very exciting! I actually missed my early am flight to Africa and will now depart at 5:40PM Eastern US time. Again, because of the trademark State Street Global Advisors has asserted on the name Fearless Girl, contributors may put their names but, they cannot use a logo in conjunction with the work. In regard to social networking, so long as the work is positioned a a gift, it should be ok since the Fearless Girl name is common place and all over the media. I am thrilled you are still aiming for September however, for your protection and my own, I’d like to suggest a conference call with my lawyer Nancy Wolff and, if necessary, her trademark partner. If you can chat today, I will see if Nancy is free. Otherwise, I could possibly take a call Thursday afternoon from Cape Town, SA or you can conference with Nancy without me. I will be on a tight schedule in Africa traveling from Johannesburg to Cape Town to Nairobi. Let me know what works and you can always call me via Skype at +1 302-703-0037. I’ve put in a call to Nancy and am waiting to hear from her.

Thanks for the update Rebecca. I am sure we will find a suitable compromise to make this work!

160    As to the artist’s email, by the words “because of the trade mark State Street Global Advisors has asserted on the name Fearless Girl, contributors may put their names but, they cannot use a logo in conjunction with the work” she understood the artist to be telling her that they, being MBL and its partners, could not have their logos on the plaque and that they could just have their names. She also understood the artist to be saying that using the image of the replica on MBL’s and its partners’ social media would be fine “so long as the work is positioned as a gift”. She had used similar wording in their first telephone conversation and, as then, Ms Hanlan understood her to be saying that they had to install the replica in a public place and use it for the campaign only. She knew that MBL would not be using the Fearless Girl image to advertise its legal services or as part of its brand identity.

161    Ms Wolff’s email attached the draft art agreement, making what she described as “some slight modifications” after having reviewed Mr McDonald’s comments. Ms Wolff suggested that they arrange a conference call. But Ms Hanlan was unavailable at the time proposed and she asked Mr McDonald to speak to Ms Wolff alone.

162    Before Mr McDonald’s call with Ms Wolff, Ms Hanlan exchanged emails with him in which she confirmed that if the presence of logos on the plaque was an issue they could agree to instead just list the names of MBL and its partners. Mr McDonald on 31 July 2018 sent her an email in the following terms:

See attached for a further revised version from Nancy (correcting a minor inadvertent error).

As discussed, Rebecca, our view is that the wording of the No Branding clause is a good compromise - and only using the names rather than logos on the plaque should not be a major block to bringing people on board.

As also discussed, we will prepare a brief set of paragraphs for you to use with potential co-contributors, outlining how they may use images of the work and how they may refer to it.

163    Later that day, Mr McDonald called Ms Hanlan to report on his call with Ms Wolff. The next day, Mr McDonald sent her an email to recap on what they had discussed. From her call with Mr McDonald and his subsequent email Ms Hanlan understood that logos could not appear on the plaque but that the names of MBL and its campaign partners could appear. She also understood that no further amendments to the draft art agreement were needed as Mr McDonald was comfortable that the artist was permitting the uses MBL intended to make of the replica in the campaign, and that it was ready for signing.

164    Let me deal with some other emails on 31 July 2018.

165    On 31 July 2018, Ms Hanlan emailed Mr Jacob Varghese, MBL’s CEO, to tell him about the project and to get his feedback on potential partners for the campaign. Her email listed some organisations that they were in discussion with. Her email stated:

I wanted to get you across a project you’ve heard to ensure I’ve got your input an partners.

I’m looking to build a coalition of 4-6 partners to bring Fearless Girl to create PR around the issue of Gender Wage Inequality. The unveiling will happen on Equal Pay Day in Sept (date TBC) and im also looking to compliment this with a corp engagement event where we can present some research we’ve done into this issue.

Im trying to finalise all of this within the next 7-10 days so I want to ensure that the below list of potential partners is ok with you.

Based on conversations with you and Andrew W I’ve dropped AMP. We’ve got Hesta on board and I’m hoping to get at least one other super fund – this helps build a narrative around wage equality and women’s working rights and retirement health etc

Could I please get your feedback on this today?

Ive emailed and texted Steve Bracks but haven’t heard back from him (yet).

Thank you and apologies for the timeframe.

166    Also on 31 July 2018, Ms Hanlan sent an email to Ms Pantelidis regarding HESTA stating:

Hesta

Mary delahunty is our contact

She would prefer to be the only super fund But hasn’t said it’s a deal breaker …

I wonder if we can pitch it as ‘super funds have joined together with mb and other partners to shine a light on this very important issue impacting the financial security of all aust working women …’ etc

We can arrange a meeting ASAP – I’ll set it up with you ASAP

167    On 1 August 2018, Ms Hanlan received an email from the artist. The artist’s comments in that email were consistent with what Ms Hanlan understood from Mr McDonald to be the position, being that MBL and its campaign partners could not put their logos on the plaque. The artist said:

I landed in Johannesburg a couple of hours ago and have a message from Nancy Wolff that she spoke with Ian and that he understands why we can’t sanction a logo use on the plaque. I also think it would be more elegant to omit them. If you want to order the plaque on your end, just send Nancy and I a copy of the artwork to approve. Otherwise, send me what you want and I will forward it to my plaque company and include the plaque in the crate.

168    On 2 August 2018, Ms Hanlan sent an email to Mr McDonald stating:

With the instructions to partners investing in FG can we also include reference to:

Their financial contribution of $60k (this may come down if I get more partners on board but I’m basing it on six partners)

MB will be the lead sponsor (ie our name positioning will be on top and I’ll pick up any potential $ shortfall - thus way FC isn’t ‘owned’ by anyone else in the group

All other sponsors are of equal standing

All partners agree to promote the campaign via their social channels for the duration of the campaign (approx three months) and place their logo on campaign micro site

169    On 5 August 2018, Ms Hanlan received an email from the artist which said:

I am in Kenya now and the wifi is hard to come by. I will return until August 10th. Nancy Wolff spoke with your legal counsel Ian about the particulars regarding SSGA’s trademark rights that I am bound by. I hope you will be able to work around that. In regard to the plaque, if you would like to proceed, please send me the copy, layout and the ideal size and I can order it. If you would like to handle it yourself, please have Ian add the caveat that Nancy or I approve your copy before you order the plaque. Send me a copy of the invoice and I will deduct it from the cost. I would love to know your travel schedule with the work if you have been able to define that yet.

170    The artist’s comments in that email were consistent with what she understood from Mr McDonald to be the position, being, that State Street (US) held the Fearless Girl trade mark and that MBL and its campaign partners could not use the replica or the words Fearless Girl as a brand or to advertise their services. Her impression was that the artist was broadly repeating what she had told Ms Hanlan in her email of 1 August 2018. By the words “I hope you will be able to work around that”, which she understood to be a reference to State Street (US)’s trade mark rights, she understood the artist to mean that she hoped MBL would be able to work within those requirements. Ms Hanlan understood that MBL could not brand MBL’s services using the name Fearless Girl and they could not use its logo on the plaque. She was fine with MBL complying with those limitations and thereby working within the artist’s requirements.

171    In relation to those two emails of 1 and 5 August 2018, Ms Hanlan did not give much thought to what MBL could not do with the replica, other than lock it up with its branding or put its logo on the plaque, as she had focused on what it could do. She had wanted to ensure that everything MBL wanted to do was expressly permitted by the artist and drafted into the agreement. She was happy to agree not to put logos on the plaque as long as MBL’s name and the names of its campaign partners could appear on the plaque in non-logo form.

172    Ms Hanlan had no intention of using the replica or the words Fearless Girl as a logo or as part of MBL’s brand identity. Her understanding, based on Mr McDonald’s advice and assurances, was that MBL and its partners could use the replica as part of its campaign and that included being able to use images of it and its name for the promotion of the campaign, and to raise awareness of the issues central to the campaign being pay equality and broader gender equality issues. That understanding informed her planning of the campaign, including discussions she had with her creative team and potential campaign partners.

173    During August 2018, she and the creative team continued to contact potential partners for the campaign. In an email to RMIT on 15 August 2018 she noted that “we are inviting businesses, unions, organisations, and corporate & public ambassadors, to join the partnership to drive real change”. She also listed some of the proposed elements of the campaign, being “a social media film, microsite, case studies and Fearless Girl”.

174    The artist and Ms Hanlan exchanged a couple of emails in August 2018 about a deposit to secure the replica and arrangements for the plaque to accompany it, but there was no further negotiation of the terms of draft art agreement or about what MBL and its campaign partners could or could not do with the replica.

175    Ms Hanlan and other members of the team continued to talk to potential campaign partners, including corporate partners. It took longer than she had anticipated to get organisations on board. It was apparent that they would not be ready to launch the campaign on Equal Pay Day, so they considered whether the campaign launch should be around the time of International Women’s Day 2019.

176    On 30 August 2018, she sent an email to the creative team noting that Mr Pharaoh had secured Bendigo & Adelaide Bank as a campaign partner. She did not realise at the time but she had misinterpreted what Mr Pharaoh had told her about Bendigo & Adelaide Bank’s commitment. It turned out that whilst Bendigo & Adelaide Bank had indicated real interest in becoming a campaign partner, it had not committed to doing so.

177    On 31 August 2018, she sent an email to the artist that contained a mock-up of the plaque. She noted in that email that three organisations were confirmed, namely, MBL, HESTA and Bendigo & Adelaide Bank, although her reference to Bendigo & Adelaide Bank was premature as I have just said.

178    On 2 September 2018, she received an email from the artist. The artist said “Awesome but you MUST place attribution as well: Fearless Girl by Kristen Visbal and then the other information”. The artist did not raise any concern about the identity of the two campaign partners.

179    On 6 September 2018, Ms Hanlan participated in a conference call with Mr Pharaoh, Ms Nealon and Ms Tiffany Hunter of OGB from the creative team and representatives from several prospective campaign partners, including HESTA, Newgate Communications, Bendigo & Adelaide Bank, AMP and the City of Port Phillip. During that call, they discussed the significant research MBL had undertaken about the issue of pay inequality and how to frame the campaign to maximise impact, the planned elements of the campaign, what they would be asking campaign partners to do and the costs of being involved. Following that call, Ms Hanlan continued to contact potential campaign partners.

180    On 14 September 2018, Ms Hanlan emailed Ms Carrie Smith of PwC stating:

Lovely to be e-introduced to you (thank you Michael).

I understand that Michael has given you some background on our campaign and the exciting opportunity to bring Fearless Girl to Melbourne.

I have attached some background but in summary despite sustained efforts by government, private sector and community groups – gender pay equity continues to be a real challenge with forecasts putting true pay parity at least 50 years away.

The facts

    The average pay gap throughout a woman’s life is 17.5%

    For each hour of unpaid work a man does, a woman does on average 1.46 hours.

    After a lifetime of work, a woman’s superannuation is on average half that of a man’s.

However, despite the above, 62% of Australians believe neither they (nor anyone close to them) has ever experienced gender pay inequity.

The opportunity

Maurice Blackburn Lawyers, is seeking to create an equal pay partnership with a number of like -minded companies that are committed to gender equality in their workplaces, and are supporting a campaign calling on the Victorian government to put equal pay for women and men on the agenda in 2019, by establishing enforceable equal pay principles.

We plan to unveil Fearless Girl in early 2019 and campaign/PR a round this issue through to International Women’s Day (the day when the gender pay gap is one of the biggest topics of discussion).

There are two ways that you can get involved in the campaign.

1.    The first is to financially support bringing Fearless Girl to Australia, and be associated with unveiling her in Melbourne.

2.    There is also an opportunity to support a broader campaign that focuses on putting equal pay for men and women on the public and government agenda.

If this is something PWC would be interested in it would be great to have a discuss next week and we can talk through the campaign in more detail.

181    Attached to this email was a document containing details of the marketing campaign which stated inter-alia:

1. BECOME A FEARLESS GIRL PARTNER

Fearless Girl made headlines all over the world in 2017 when it was unveiled on Wall Street as a symbol of empowerment and equality.

We will be bringing a life-sized bronze replica of Fearless girl to Australia, to be permanently housed in Melbourne.

Fearless Girl Melbourne will be one of only a limited number of replicas that have been placed in major cities around the world.

How can I become a partner?

We want genuine business leaders in the area of gender equality in the workplace to contribute financially to bringing Fearless Girl to Melbourne.

What do I get?

    Your company name will feature on the plaque of this iconic artwork.

    Kristen Visbal (the artist behind Fearless Girl) will come to Melbourne to unveil the artwork and is also available to speak at events and support campaign partners in other ways, where feasible.

    Attendance and recognition at an event to celebrate the unveiling of Fearless Girl in it’s final permanent Melbourne home.

    Regional roadshow, allowing you to engage with partner stakeholders, clients, and employees (this could be extended nationally depending upon partner requirements).

182    On 16 September 2018, Ms Hanlan emailed the artist to let her know that they were considering moving the date to International Women’s Day in 2019. She wanted to check whether the artist was likely to be available at that time.

183    On 17 September 2018, Ms Pantelidis emailed Mr David Atkins, the CEO of Cbus, and Mr Robbie Campo, Cbus’ Group Executive Brand, Advocacy and Product, inviting Cbus to consider partnering in the campaign and attaching a version of the partner pack.

184    On 19 September 2018, the artist responded to Ms Hanlan’s 16 September 2018 email. In her response the artist noted that State Street (US) had three more replicas of the New York statue and that she was unaware of the planned location for at least one of those replicas. But she noted that SSGA had locations in Australia. When Ms Hanlan read that email she had two concerns. First, she was concerned that State Street (US) might unveil one of its replicas in Australia before MBL was able to launch its replica. She wanted to ensure the success of MBL’s campaign and she did not think there would be much media interest in an unveiling of the second Fearless Girl in Australia. Second, she was concerned that if the artist had to be available for any unveiling planned by SSGA she might not be available for MBL’s launch event.

185    On 21 September 2018, Ms Hanlan responded to the artist’s email stating:

Thank you

That’s interesting - so state street has an aust location??

I’d really like to know if they are going to go to aust as that would majority impact on our project as I’m sure you can appreciate! I’m so close now but it would be terrible if we locked it all in and then they unveiled her in aust before iwd!

Thanks for your help Kristen - much appreciated.

186    On 22 September 2018, Ms Hanlan received an email from the artist encouraging MBL to unveil the replica sooner rather than later, that is, in late November or December 2018. The email stated:

That’s why I would urge you to unveil in late November or December as a holiday event just to circumvent any potential issue. I will tell you that last I heard, they were targeting the UK, Japan or Hong Kong and their company headquarters in Boston. That was a year ago. They asked to purchase 1 to 2 castings more from me this summer but, I declined as they already own four and, though Fearless Girl has her roots in the financial industry, she has a much broader message than just the assertion of women in finance. The work is a substantial investment, I know, and I want to be perfectly honest. Think about unveiling early away from all the other unveilings. I am making an assumption that the three SSGA castings as well as the German unveiling will occur International Women’s Day 2019. The boarding school will unveil next May. I have three others pending. You need to decide whether you want to be part of that wave or just have it be about Australia.

Here are the SSGA Australian offices. Looks like there are 5. Two in Melbourne and 3 in Sydney. I would prefer an unveiling by the people.

One other caveat, I have potentially accepted a new commission against single use plastic bottles as marine pollution. They would like to place the work in New York City or just outside the city at one of the nearby beaches. They still have to approve the budget which I will type up on the plane this evening but, if it’s a go, I will need to work wax in November in California and check metal in March some time. I could fly to Australia on Saturday the 23rd and we could unveil the week of the 26th. Try and hammer down your date and I will guide them to an unveiling date that works with our schedule as well.

I am headed out on travel through next Wednesday night but, will be checking email. Hope you’re enjoying your weekend!

187    But Ms Hanlan knew that that timing would not be practically possible and she did not propose to bring the unveiling forward. The artist commented, “I am making an assumption that the three SSGA [replicas] as well as the German unveiling will occur International Women’s Day 2019. The boarding school will unveil next May. I have three others pending. You need to decide whether you want to be part of that wave or just have it be about Australia”. Ms Hanlan took those words to mean that the German unveiling, the boarding school unveiling and the “three others” were not connected with State Street (US).

188    In around late October 2018, Ms Hanlan received an Apple News alert linking to an article in the Evening Standard online about the unveiling of a Fearless Girl replica in London. She then forwarded that link to her contact at Bendigo & Adelaide Bank in the hope that it would inspire it to join the campaign. The article did not say who was unveiling the replica in London, but based on her earlier correspondence with the artist she assumed that it was State Street (US).

189    In early November 2018, Ms Hanlan was told by Ms Pantelidis that Cbus had agreed to come on board as a campaign partner.

190    Further, in early November 2018, Ms Hanlan received a proposal from News Corp listing several media opportunities and ideas with associated costings. Copies of the News Corp proposal were sent to HESTA and Cbus, as well as to other potential partners, as she thought that the prospect of media support from News Corp might encourage the existing campaign partners to increase their contributions or help convince other organisations to get on board.

191    On 9 November 2018, Ms Hanlan sent an email to HESTA representatives stating:

Hope you’re both well. I’m conscious I haven’t given you an update on Fearless Girl in a while – it’s been a bit chicken and egg trying to get the rest of the partners on board but things are progressing well and we are almost there (!)

Partners

    At this stage we have four partners on board and 2-3 who are warm – we are looking to lock everything down within 1-2 weeks max.

Sally Capp

    We have a meeting with Sally on Dec 5 to discuss a permanent home for Fearless Girl so things are progressing well in that area.

Fearless Girl – Amplification Program

With News Limited coming on board as a partner they have offered some media opportunities to support this campaign. For your consideration I’ve attached an advertising/sponsorship media package that would require additional $ investment as part of the amplification of this event – although this is additional spend it also represents a ‘money can’t buy’ amplification strategy that will effectively promote and leverage your investment in Fearless Girl.

This amplification opportunity includes a full wrap of the Herald Sun, 4 x advertising spots in sport, business and weekend sections of paper, full page advertisement in Stellar Magazine, advertising on digital platform and social platforms as well as a table for 10 at the International Women’s Day lunch event (We are still working out the details of this event but we are hoping Audi will be the key sponsor).

Gender Pay Equality Campaign

We would look to launch the campaign early next year in line with the launch of Fearless Girl.

In the attached doc News Limited has suggested March-April campaign period. This is indicative only and something we all need to discuss. At this stage I’d recommend launching a bit before March so we have clear space before all of the media noise created by IWD on 8 March.

It would be great if we could discuss these proposals next week once you have had a chance to review them.

192    On 9 November 2018, Ms Hanlan sent an email to a representative of the Bendigo & Adelaide Bank stating:

I have previously mentioned that one of our partners is News Limited and as a result of this partnership we will be able to access excellent coverage of the FG launch over a 6 week period.

I’ve attached two media opportunities that would require additional & investment as part of the amplification of this event although this is additional spend it also represents a ‘money can’t buy’ amplification strategy that will effectively promote and leverage your investment in Fearless Girl. There is a sponsorship (advertising component) as well as regional roadshow component.

Advertising/Sponsorship

This amplification opportunity includes a full wrap of the Herald Sun, 4 x advertising spots in sport, business and weekend sections of paper, full page advertisement in Stellar Magazine, advertising on digital platform and social platforms as well as a table for 10 at the International Women’s Day lunch event (We are still working out the details of this even but we are hoping Audi will be the key sponsor).

Regional Roadshow

In the proposal we have suggested 3 regional spots but these are negotiable depending upon your interest/preference in locations.

We need to finalise the partners as soon as possible so we confirm timeframes and activation programs (please note the March-April timeframe in the attached document also has some flexibility in it). It would be great if we could discuss these proposals next week once you have had a chance to review them.

193    On 16 November 2018, Ms Hanlan received an email from the artist suggesting a telephone call. Ms Hanlan cannot recall whether she had a call with the artist then. It is more likely that they did not have a call. She had no update for the artist at that stage. She was not then able to tell her where they intended to locate the replica, when it would be unveiled or the final number and identities of the campaign partners.

194    On 1 December 2018, Ms Hanlan sent an email to the artist stating:

Hope you’re well. I’m finally in a position to update you. Things are coming together and I’m expecting to be in a position to order our FG before Christmas.

Nearly all of my partners are in place and on 5 Dec I have the meeting with the Lord Mayor about where to house her permanently – somewhere central in the CBD. After that meeting Im expecting to be in a position to lock in remaining details and then get my order into you the following week.

Partners

In addition to Maurice Blackburn the partners I’m in the final stages of negotiation include:

    Hesta and Cbus – these are both superannuation providers and are 100% locked in

    News Limited a large media provider is on board as a media partner so we’ll be sure to have everyone hear about FGs arrival

    AFL – I’m in talks with AFL which is the national sport of Australia (Aust Football League) – this would be major to get them involved! (Im sponsoring the AFLW which is the news women’s league so I’ll be representing women in sport with this alignment which is a super positive thing to do).

    Bendigo Bank will confirm with me next week but I spoke with them yesterday and they are very keen

These are all big high profile blue chip brands who are visible parts of the Vic/Aust corp landscape and community so it’s a good result.

Timings

At this stage I’m working to the following timeline:

  •    Unveil and begin PR for FG in late Feb – get a jump on the International Women’s Day (IWD) noise

  •    Have a corp event on IWD where we have FG there – and hopefully you as a guest speaker (note: IWD 2019 is on 8 March and the theme is #balanceforbetter )

    Tour FG in Victoria – March/April – get her out to regional and rural towns where we can have the communities engage with her etc

How do these timings work for you? Some of our partners would also like for you to be available to talk to their business separately – a staff /client presentation etc (all of their offices are in Melbourne). I’ve said this is something you’d be open to depending upon scheduling etc. Ill also want to buy a mini FG for each of the partners as I’ll give that to them as a keepsake ( think I’ll need ten of those in total).

State Street

Do you have any more intel from State St – are they looking to unveil FG in Aust? This is my biggest fear as it’s the one thing that could derail all my plans and something I can’t really control.

Thank you for sticking with me – I know it’s been a long time and but I’m now feeling very confident about it all – I’ll let you know the outcome of my meeting with the Lord Mayor next Wednesday.

195    She told the artist that both HESTA and Cbus were on board with the campaign and that she was hoping to get others involved too. She noted that she was speaking to Bendigo & Adelaide Bank, as well as News Corp and AFL Women’s. In that email she also asked whether the artist knew whether State Street (US) planned to unveil a Fearless Girl replica in Australia. She was conscious that three months had passed since their conversation in which the artist had told her that State Street (US) owned three other replicas. As noted above, Ms Hanlan had read in the media that a Fearless Girl replica would be unveiled in London. She became increasingly concerned that she could not control whether another replica might be unveiled in Australia prior to MBL’s launch event. She was worried that she had overlooked ensuring exclusivity in Australia and she subsequently tried to amend the draft art agreement to include a provision to this effect. The artist responded to her email the same day.

196    On or around 14 December 2018, Ms Hanlan had a telephone conversation with the artist. She discussed the choice of patina for the replica and MBL’s progress in finding partners for the campaign. She told her which organisations were already on board, namely, HESTA and Cbus, and who MBL were still talking to, namely, Bendigo & Adelaide Bank, AFL Women’s and News Corp. She said to the artist that she hoped to be in a position to order the replica before the 2018 Christmas holidays. She did not recall the artist expressing any concern about the identity of any existing or potential campaign partners. She recalled that the artist said it would be great if Plan International could be involved in the campaign in some way.

197    Further, in that call the artist said to her that State Street (US) had approached her seeking to purchase three additional replicas of the New York statue and that she was in two minds about that request because, as she had told Ms Hanlan in their first call, she thought that the message of Fearless Girl would be better served if it came from a variety of organisations.

198    Now on learning that State Street (US) was seeking additional replicas, it made Ms Hanlan think that State Street (US) must be investing heavily in Fearless Girl, and that made her wonder whether State Street (US) would have an issue with MBL unveiling the replica. She was not thinking about whether State Street (US) had any legal basis to challenge MBL. The negotiations with the artist and Ms Wolff about the draft art agreement had left Ms Hanlan comfortable that the artist had the rights to sell MBL the replica and allow MBL to use it. Rather, her concern was from a marketing perspective. She thought that if she was State Street (US)’s marketing person, she might be annoyed if someone else unveiled another Fearless Girl. That thought made her a bit nervous as by then she knew that State Street (US) was a large, American financial organisation and she was worried about whether they might take issue with the replica.

199    Given her concern, she asked the artist whether MBL should be worried about State Street (US). She recalls saying words to the effect of “Do you think State Street will react to MBL’s unveiling of the Statue? Did they react when the Oslo statue was unveiled?” She recalled that the artist said words to the effect of “No, they had not caused any trouble with the Oslo unveiling”. That State Street (US) had done nothing about the Oslo replica gave her comfort. In her belief, if State Street (US) was concerned about other people owning and displaying replicas of the New York statue it would have done something about the Oslo replica. She also thought that the artist must not be worried about State Street (US) as she had been very public about her desire to “spread the message” of Fearless Girl by selling replicas around the world. By the end of that call, Ms Hanlan was left with the impression that the artist was still happy for MBL to purchase the replica and unveil it with its campaign partners and that there would not be any issue from State Street (US).

200    In an email of 15 December 2018, the artist again mentioned Plan International. But Ms Hanlan did not contact Plan International. By that stage, MBL needed campaign partners who could make a financial contribution to the campaign.

201    On 21 December 2018, Ms Hanlan received an email from the artist in which the artist asked “What happened with your last partner in Fearless Girl?” and then stated:

Just double checking, none of the sponsors are financial organizations, right? That is the one caveat I must adhere to.

202    It is worth setting out the email in its entirety for context:

I just returned home again last night. I have nothing here from you.

What happened with your last partner in Fearless Girl?

Just double checking, none of the sponsors are financial organizations, right? That is the one caveat I must adhere to.

Are you ready to sign today and do you need an updated agreement with the current date? Shall we both review the agreement and make sure it is current?

If you have selected your patina, I can insert that piece of information in the agreement.

You did say you would sign before Thursday but, did you not say you would be leaving for the holiday on Thursday and then when do you return?

It’s 10PM your time on Friday and I don’t know if you’ll get this. I do wish I had thought to send an email yesterday.

If you get this please let me know the status of our girl!

Thanks Rebecca and MERRY CHRISTMAS!!

203    Ms Hanlan could not recall when she read the email, but she gave evidence about her state of mind when she did read it. When she read it, she checked whether it required any immediate action from her. As she recalled, it did not. She had not yet received confirmation at the time from senior management at MBL that she could order the replica. So, she did not send any response to the artist’s email at that time.

204    Now in relation to the artist’s question: “Just double checking, none of the sponsors are financial organizations, right? That is the one caveat I must adhere to”, Ms Hanlan recalled being somewhat confused by that question. She knew that both Mr McDonald and her had made it clear on several occasions that superannuation funds were going to be partners and she had told the artist in an email that month the identity of those superannuation funds, namely, HESTA and Cbus, and on a subsequent call. So given that, Ms Hanlan assumed that the artist’s question was not directed at the two superannuation funds, which she knew were already on board. Ms Hanlan wondered whether she was concerned about Bendigo & Adelaide Bank, which she had mentioned as potentially coming on board as a campaign partner. Given that Bendigo & Adelaide Bank was not yet confirmed as a campaign partner, Ms Hanlan decided to hold off responding to the artist until she could give her confirmation one way or the other.

205    Now I accept Ms Hanlan’s evidence that in not responding to the artist’s 21 December 2018 email at that time, Ms Hanlan did not intend to conceal from the artist who the campaign partners were. Indeed, she had already told the artist that information on several occasions. Further, I accept Ms Hanlan’s evidence that she did not think at the time that she needed to respond to the artist at that time, because what MBL was planning to do was consistent with what was allowed under the draft art agreement.

206    Ms Hanlan did not forward the artist’s 21 December 2018 email to Mr McDonald or to any person at MBL, nor did she discuss the contents of the email with anyone. She considered that there was nothing new in the email that required any action from MBL at that time. I will return to discuss the significance of the artist’s 21 December 2018 email and Ms Hanlan’s approach to it later.

207    Further, on 21 December 2018, Ms Hanlan sent an email to Mr Varghese and Ms Pantelidis, seeking authorisation to commit MBL to purchase the replica. At that time, Ms Pantelidis and Ms Hanlan were aware that HESTA and Cbus were sensitive to being seen to be acquiring the replica with members’ money and that their financial contribution was to the broader campaign costs and launch event. Ms Hanlan understood that their concern was that the media might make HESTA and Cbus’ use of members’ funds the focus of the story, which might risk the campaign message getting lost.

208    On 26 December 2018, Ms Hanlan sent an email to the artist which said:

Merry Xmas Kristen

Unsurprisingly it was overly ambitious getting responses from everyone before they left for Xmas. I’ll have a final confirmation w/c 7 jan as we must make a decision either way that week.

I’ve spoken to our PR agency and we think it might be best to unveil and have an event 7-10 days before IWD -

that’s also good for you as it frees you up For iwd too as I’m conscious of us impacting your plans.

I’ll talk to you in the new year.

209    Before moving into 2019, I should also note that in December 2018, OGB produced a media strategy stating:

Maurice Blackburn

Media Strategy – Gender Pay Gap / Fearless Girl Campaign

Drafted by OGB, December 2018

This document sets out One Green Bean’s recommended approach for driving PR coverage for Maurice Blackburn for the unveiling of Fearless Girl in Melbourne, including the timings, media strategy and key messages.

Our recommendation is to align the timing of the unveiling of Fearless Girl with the planned corporate event, the week prior to International Women’s Day. This removes us from the noise of the day itself, but is close enough in timing to still allow us to use IWD in our messaging; and also maximises the time we have with the artist, Kristen Visbal, allowing her to attend both events.

1. OBJECTIVES

    Generate awareness for unveiling of Fearless Girl in Australia

    Position Maurice Blackburn as a leading voice related to workplace equality in Australia, and the driver behind the arrival of Fearless Girl

    Use Fearless Girl to continue to drive conversation around Equal Pay, in the lead up to International Woman’s Day on the 8th March

2. CONSIDERATIONS

    Brand presence for Maurice Blackburn

    Media will be able to tell the story of Fearless Girl coming to Melbourne without necessarily giving credit to or including Maurice Blackburn in the story. We will need to work hard to try and guarantee brand mentions and the inclusion of spokesperson quotes in coverage (we can do this more directly with News Corp).

    Timings

    This will be a news campaign, highlighting the arrival of Fearless Girl, with commentary around what this stands for in Australia. We would therefore expect all coverage to land on the day of launch or shortly afterwards

    IWD is on the 8th March therefore our communications should use this as a timely news hook, with the unveiling and corporate event to take place the week prior.

    Leading asset

    Fearless Girl has been widely covered by Australian media in the past however we believe there is still appetite for media to cover it again when it arrives locally. We would recommend using existing pay gap stats to support the unveiling of the statue to ensure the story has additional relevance for local media. Having the artist, Kristen Visbal, here as a spokesperson will be a great asset for media.

    Media

    Although engaging a media partner is a great way of guaranteeing editorial support, it can limit coverage opportunities in competing titles. If News Corp comes on board as a launch partner then this will limit coverage within Fairfax owned titles in particular. We will therefore focus on securing editorial across broadcast titles such as Channel 7, The Project etc, as well as radio and online titles.

    Corporate event

    Maurice Blackburn will be holding a corporate event for key business leaders to coincide with the unveiling and will be inviting The Fearless Girl artist as a key speaker as an additional pull for attendance. This event will not be used as an asset for media and no coverage will be generated on the back of this.

3. KEY MESSAGES

NB. These messages will not be conveyed verbatim

Brand messaging

    Maurice Blackburn is Australia’s leading social justice law firm and has a strong focus on the importance of equality in the workplace.

Campaign messaging

    Fearless Girl is today being unveiling in Melbourne, Australia ahead of International Women’s Day.

    Maurice Blackburn has brought Fearless Girl to Australia to highlight the gender inequalities that continue to exist in Australian workplaces – including the 21.3% pay gap that still exists between men and women in the Australian workplace.

    There are pay gaps favouring men in every industry and occupation in Australia. Women earn, on average, just 79% of men’s full-time total remuneration salaries.

4. SOCIAL MEDIA (owned)

Fearless Girl

    Reveal – Content announcing the statue (time-lapse, 3D image or strong photo).

    Free media – Posting of free media articles discussing the purpose of the statue.

    HONY [Humans of New York, an online publication] – Featuring the artist Kristen Visbal.

    Targeted ‘dark posts’ with a strong CTA [call to action] driving petition signatures.

Gender pay gap content

Additionally, a piece of video content that speaks more broadly to the issue of the gender pay gap is being developed. This will run on Maurice Blackburn social channels around the same time as we launch Fearless Girl / in the lead up to and on IWD.

All content on social media will drive to our petition calling on more government action to reduce the gender pay gap, encouraging signatures. Campaign partners will also be invited to share content on their channels.

Channels

-    Facebook

-    Twitter

-    LinkedIn

-    Instagram

Objectives

-    Mass reach

-    Awareness

-    Drive petition signatures

Hashtags

    #Fearlessgirl

    #IWD #IWD2019

Handles

    @WeFightForFair

210    On 3 January 2019, following confirmation from Mr Varghese that MBL could go ahead with the purchase with only two other campaign partners on board, Ms Hanlan emailed the artist to tell her that MBL would proceed with the purchase of the replica.

211    Ms Hanlan asked: “In respect to State Street - did you make a decision about their request for three additional girls? That’s [a] major concern - we can’t get trumped!”

212    The artist responded to Ms Hanlan’s email. In that email, she askedmay we review the partners?”, which Ms Hanlan understood to mean who are MBL’s campaign partners? Given that Ms Hanlan had told the artist on several occasions that MBL would be partnering with HESTA and Cbus, Ms Hanlan assumed that the artist was now asking for a complete list in case anyone else had come on board.

213    On 9 January 2019, Ms Hanlan responded by naming the campaign partners and identifying the types of companies that they were, being superannuation. She also told the artist that MBL was still looking for more campaign partners and that they might include “a bank and an offshoot of the defence force” and “the ACTU (aust trade union association)”.

214    Ms Hanlan’s precise response was:

Just three of us at this stage:

Maurice Blackburn

Hesta (superannuation)

Cbus (superannuation)

Its possible we might also have a bank and an offshoot of the defence force that specialises in women and STEM ie science and technology)

We may also offer the ACTU (aust trade union association) a spot also as they are the biggest champion of workers rights in the country and closely affiliated with us.

215    On 10 January 2019, the artist responded to Ms Hanlan’s email. In relation to the identity of the campaign partners, the artist wrote:

OK. Good to know. So long as Maurice Blackburn is signing the agreement. Technically, I cannot sell to another financial company. So long as the work is not used for any commercial or corporate purpose or as a brand identity for your sponsors but, instead is promoted as a GIFT to the Australian people, we are good. As we discussed earlier, unfortunately, we can’t use logos on the plaque. I did review all of this with lawyer so, we are in good shape. My agreement with SSGA is written so that another company cannot use the same work to promote their brand. Focus on the fabulous visibility nationally and in the global arena that Fearless Girl provides.

216    At the time Ms Hanlan found the artist’s wording to be a bit odd, although she did not analyse each of those sentences in great detail. Her view was that they had already agreed on how MBL and its campaign partners would use the replica as part of the campaign, and she had already told the artist the identities of the campaign partners. Ms Hanlan had always planned that MBL would be the one to sign the art agreement, because she wanted MBL to maintain control over the acquisition process and did not want to complicate the negotiations with additional parties.

217    It seemed to Ms Hanlan that the restrictions the artist referred to around branding and financial services must be a repetition of restrictions in the no branding use clause. The draft art agreement had been negotiated by their respective lawyers and she understood the outcome was that it would be fine for MBL and its campaign partners, including superannuation funds, to use the replica in the ways Mr McDonald had set out. As MBL’s plans for the campaign had not changed since the time that the draft art agreement was negotiated, she did not consider that there was any new issue being raised by the artist. The artist’s comment that “I did review all of this with lawyer so, we are in good shape” confirmed Ms Hanlan’s understanding that there was no new issue to be concerned about. Her understanding then remained the same as her understanding in early August 2018, being that MBL and its campaign partners could use the replica as part of the campaign, which included being able to use images of it and its name for the promotion of the campaign and to raise awareness of the issues central to the campaign, being gender pay equality and broader gender equality issues.

218    Ms Hanlan did not forward the 3 to 10 January 2019 emails to Mr McDonald or anyone else at MBL, nor did she discuss the contents of the emails with anyone. It did not occur to her to do so, given that her understanding was that the artist was happy for them to proceed as already agreed. I will return to discuss the significance of all of this later.

219    Following the 3 to 10 January 2019 emails, Ms Hanlan exchanged several emails with the artist regarding the patina, minor amendments to the draft agreement and arrangements for her trip to Australia. At no point did the artist make any comment or complaint about the identity of MBL’s partners in the campaign, HESTA and Cbus.

220    Over the course of the development of the campaign, Ms Hanlan had been involved in several discussions about potential locations for the replica both before she contacted the artist and afterwards. She had considered the Collins Arch development in the Melbourne CBD, the City of Port Phillip and Marvel Stadium in the Docklands precinct of Melbourne, but none of these were her preference. Her understanding was that Collins Arch was owned by Cbus and a benefit of installing the replica there would be that they would not have to get council permission.

221    In mid-January 2019, Mr Pharaoh was contacted by the Speaker of the Victorian Legislative Assembly who suggested that the replica could be placed in Federation Square in the Melbourne CBD. At that stage they had been pressing the City of Melbourne Council for a location on public land without success.

222    In Ms Hanlan’s view, Federation Square seemed like a good option for several reasons. First, it received a lot of foot traffic. Second, there was enough space to place the replica and allow members of the public to take photographs with it. Third, similarly to Collins Arch there would be no need for council approval.

223    On 11 January 2019, Mr Pharaoh sent Ms Hanlan an email making suggestions for the campaign. Ms Hanlan did not agree on some aspects as representing the scope of the campaign.

224    On 18 January 2019, Ms Hanlan met with representatives of both HESTA and Cbus about the campaign and launch event. Before the meeting she circulated several documents that set out aspects of the planned campaign. At the meeting they discussed the various elements of the campaign, including the unveiling of the replica, the campaign film, the campaign pledge, the microsite and the media strategy.

225    I note that there was an OGB document circulated by Ms Hanlan to representatives of HESTA and Cbus for the purposes of a meeting on 18 January 2019 to discuss the campaign and launch event which stated:

FEARLESS GIRL / EQUAL PAY CAMPAIGN

Background: Ahead of International Women’s Day on March 8, 2019, Maurice Blackburn and partners are launching two connected campaigns to raise mass awareness of the inequalities that continue to prevail in Australian workplaces.

Objectives: Position Maurice Blackburn and supporting partners as leading voices in issues related to workplace equality in Australia by asking the Victorian Government to support equal pay by creating enforceable equal pay principles.

Success of this campaign would result in the Vic government making equal pay a priority for the state government by using their position as the state’s largest employer and their procurement power to create enforceable equal pay principles for government employees as well as incentives for private sector employers to adhere to the 5 point pledge

I pledge to support gender equality in my workplace:

1. I pledge to commit to gender pay equity and completing a gender pay audit

2. I pledge to implement a flexible work policy

3. I pledge to support a safe and respectful workplace

4. I pledge to support progression and leadership opportunities for women

5. I pledge to implement a family violence leave policy

Key messaging:

    Fearless Girl is today being unveiled in Melbourne, Australia ahead of International Women’s Day.

    Fearless Girl is a powerful representation of the fight for equality in the workplace – from the gender pay gap, to equal representation between men and women at board level and in senior positions within organisations, to building workplace cultures that are free from harassment and supporting both diverse and flexible working needs.

    Maurice Blackburn in partnership with Hesta and Cbus have brought Fearless Girl to Australia, to highlight the inequalities that continue to prevail in Australian workplaces – including the 21.3% pay gap that currently exists between men and women employed in Australia.

    There are pay gaps favouring men in every industry and occupation in Australia. Women earn, on average, just 79% of the full-time, total remuneration salaries earned by men.

Approach: Implement strategic PR and social campaigns that drive mass awareness and generate widespread support of the issue.

Dissemination will be via supporting partners – Maurice Blackburn, HESTA, Cbus, participating unions and supporting corporates to support via social media channels and digital channels (video).

Assets: Video, microsite, assets for industry and corporate partners.

Call to action: Show your support by sharing this campaign – calling on the Victorian Government to make equal pay a reality by 2020.

Campaign:

Fearless Girl

(Activation)

Equal Pay (Playing

Grown Ups)

Overview:

Implement a strategic media campaign, unveiling Fearless Girl to major print, broadcast and online titles in the run up to International Women’s Day 2019.

Create an engaging content piece that highlights the five main reasons behind the gender pay gap by using children to extenuate the inequalities of Australian workplaces.

Objective:

Mass awareness

Support and shareability

Audience:

Political stakeholders, business and consumers through top tier news, business and lifestyle media titles.

Consumers through social media targeting and partner channels.

Assets:

- Statistics and interviews

- Launch video/ image opportunities

- Artist imagery and quotes

- Hero video

- Shareable assets (industry focused)

- Influencer content

Timings:

W/C Feb 25

W/C Feb 25 / w/c March 4

Call to action:

Show your support and help call on the Victorian Government to make equal pay a reality by 2020.

Show your support and help call on the Victorian Government to make equal pay a reality by 2020.

226    Further, there were some further discussions with News Corp about its proposal. In her email of 21 January 2019, she noted that News Corp’s proposal for a strip ad/vertical column ad format was not appropriate for this campaign. Ms Hanlan said:

[T]his might have been suitable for some of the more retail orientated partners you had been looking to get on board earlier in the process but for Hesta/Cbus/MB we are needing a format that allows us to make an announcement as to why we have come together to form a partnership that highlights the importance of gender equality/wage equality. This isn’t something that can be done in a traditional ad style layout. Ideally we are looking for a format that allows us to present a longer style narrative and discussion - more article style.

227    In her mind, she did not want the information in the media to look like a traditional advertisement because this was notice of a genuine campaign in relation to a serious issue. She wanted the information to appear as a journalistic, informational piece.

228    On 22 January 2019, Mr Pharaoh emailed her and representatives of HESTA and Cbus to tell them that the operators of Federation Square were willing and enthusiastic to place the replica within Federation Square.

229    On 25 January 2019, there was a meeting between the campaign partners. At the meeting it was agreed by all participants that the replica would reside at Federation Square for two years and that its permanent location would be the subject of further discussion, with a public placement at Collins Arch being one option still on the table.

230    On 25 January 2019, Ms Hanlan contacted Mr McDonald and asked him to review the version of the draft art agreement that she had just received from the artist. The artist had proposed a clause that the replica be installed in a public place. Ms Hanlan was fine agreeing to that because that had always been MBL’s intention. She also told Mr McDonald that it would be MBL only purchasing the replica, but that the names of the other campaign partners would appear on the plaque. She could not recall telling Mr McDonald why it was only MBL purchasing the replica. She understood the reason to be that, whilst both HESTA and Cbus were happy to contribute to, and be publicly associated with, a campaign to generate awareness about pay inequality and gender equality issues, they were concerned that some parts of the media might focus on their acquisition of an artwork with members’ funds rather than the issues that were the focus of the campaign.

231    On 25 January 2019, Mr McDonald sent her potential wording that he had previously sent to her on 2 August 2018 concerning the co-contributors. It is worth setting this out:

Hi Rebecca,

See below for email setting out potential wording for co-contributors.

Look forward to further comments or questions.

Hi Rebecca and Kara,

Perhaps something along the following lines in relation to a communication to potential partners?

Fearless Girl” comes to Australia

Equal pay – even in 2018 – is still not a reality for many Australian women. Similarly, truly representative gender diversity within the corporate sector has still not been achieved.

To bring attention to these issues, Maurice Blackburn Lawyers is liaising with Kristen Visbal to buy and bring to Australia a lifesize limited edition copy of her sculpture, “Fearless Girl”.

The sculpture has already generated a great deal of media interest overseas, and the Australian edition will similarly generate publicity for Equal Pay and Gender Diversity issues in Australia, including through a proposal that the work go on an initial tour (including in regional Australia), to generate discussion on these issues.

Notably, Kristen has agreed to come to Australia to launch and promote the work – an event which will undoubtedly generate a great deal of media interest and publicity.

Once purchased, and once the initial “road tour” has been undertaken, the work will be gifted to [insert], so that it can be a permanent inspiration to Australian women in all walks of life to achieve to their best, and to be properly recognised by society for their contribution (including by being paid the same as men and to have the same opportunities to lead in public and corporate life).

To make this happen, however, we need at least six corporate partners to come on board.

The contribution we seek is comprised of:

    a financial contribution of at most $60,000 (less, if more than six partners come on board); and

    at least three months assistance in promoting the campaign via your social media and other channels.

In return, co-sponsors will have the opportunity to:

    publicise their role in contributing to the acquisition of the work for the people of Australia;

    photograph and film board members and senior management with the work, to publicise their role in contributing to the purchase;

    generate interest and discussion in their own workplaces and communities in relation to the work and the issues; and

    have their company name permanently associated with the work through a plaque (to be displayed with the work).

While Maurice Blackburn will be the lead sponsor in the project, we really need your assistance as a co-sponsor to make this happen.

Please contact Rebecca Hanlan on [insert] or by email to RHanlan@mauriceblackburn.com.au if you would like to discuss.

We look forward to hearing from you very soon.

Rebecca and Kara: look forward to your comments and any questions!

232    Over the following days, she liaised with Mr McDonald about changes to the draft art agreement and to guidelines he had drafted for the campaign partners to tell them what they could and could not do with the replica. On one occasion she asked Mr McDonald whether MBL would be legally responsible for anything its campaign partners did outside of the guidelines. She did not have any reason to believe that the partners would do anything inconsistent with the art agreement, but wanted to ensure from a general risk management perspective that MBL would not be legally responsible if they did.

233    On 30 January 2019, she sent Mr McDonald’s minor amendments back to the artist, who then sent Ms Hanlan the final version of the art agreement for signing.

234    On 1 February 2019, Ms Hanlan sent Mr McDonald a further email about the campaign partner guidelines. The email stated:

This all makes sense but I’m trying to cast my mind back to our original discussions and I can’t remember exactly what this clause meant:

    use images of the work in corporate governance activities or in the financial services sector; or

Since none of the partners are fin services that bit is clear but what do I advise the partners around the meaning of ‘work in corp governance’?

Sorry to keep asking so many questions!

235    She knew that the guidelines were referring back to restrictions in the draft art agreement, but wanted to be able to explain to the campaign partners exactly what that part of the guidelines meant if they asked her. In saying that “none of the partners are fin services” she was intending to convey, in a short-hand fashion, her understanding that MBL would not be breaching the restriction relating to financial services in the no branding use clause, because the proposed involvement of the campaign partners had been expressly permitted in the draft art agreement.

236    Of course, despite the words Ms Hanlan used, she was always aware that superannuation funds would be considered to be businesses in the financial services sector.

237    Now at this point it is worth pausing to make several points of distinction that SSGA sought to cloud during the running of the evidence and in submissions. HESTA and Cbus as superannuation funds were involved in the financial services sector and of course provided financial services and financial products. But that did not entail that they could not be campaign partners concerning the MBL campaign. They were not flogging their products or services as part of the MBL campaign.

238    Also on 1 February 2019, she was co-ordinating the drafting of the press release. There had been some discussions between the campaign partners about the focus of the press release, with each of HESTA and Cbus seeking to emphasise certain aspects of the campaign.

239    On or around 4 February 2019, she advised News Corp that MBL, Cbus and HESTA were happy to proceed with the media partnership.

240    On 4 February 2019, she received a response from Mr McDonald to her email of 1 February 2019 and had a call with him that day. He again confirmed that the draft art agreement permitted MBL to use the replica for the purposes of the campaign, but not for other purposes. She was left with the impression that MBL’s proposed use of the replica would be fine.

241    Later that day, she sent another email to Mr McDonald asking him to insert a clause in the draft art agreement to ensure that the artist did not sell another replica into Australia before 26 February 2019. At that time, her concern was not about whether SSGA would unveil one of its replicas in Australia. She understood that SSGA had three replicas in addition to the New York statue and the artist had told her it planned to unveil those replicas in other countries, and that even if SSGA did plan to unveil a replica in Australia, the artist could not prevent that happening. Rather, she wanted to ensure that the artist would not sell a replica to another Australian buyer. There was some back and forth between the artist and Ms Hanlan about this issue, which they resolved.

242    In her email to the artist on 4 February 2019, she also asked her to confirm where the other Fearless Girl replicas were located in the world. She listed the three unveiled statues in New York City, Oslo and Africa, the two planned unveilings in London and Germany and the other places where someone had expressed an interest in unveiling, namely, Uruguay, Cape Town and Spain. In all likelihood Ms Hanlan obtained knowledge about the expressions of interest from the artist during one of their conversations. The reason she sought confirmation about the other locations was in case MBL decided to put that information in the press release.

243    Ms Hanlan signed the art agreement on behalf of MBL on 6 February 2019.

244    Soon after, MBL issued a press release. I will set this out later in my reasons.

245    Further, Q&A points for the campaign partners were prepared at this time which were consistent with the themes of the media release.

246    One day after signing the art agreement, Ms Hanlan was told that SSGA had contacted HESTA about the press release that had been issued.

247    On 8 February 2019, she provided HESTA and Cbus with the campaign partner guidelines. Neither HESTA nor Cbus asked her any questions about those guidelines. She had not disclosed to HESTA or Cbus the terms of the art agreement or the specific restrictions and permissions set out in the no branding use clause and nobody from HESTA or Cbus had asked about the specific terms of the art agreement.

248    Ms Hanlan gave evidence that in all of her meetings and communications with HESTA and Cbus, it was clear that they would be using the replica only for the purposes of the campaign. No HESTA or Cbus representative ever asked her, nor did she suggest, that either of them could own the replica, or use it for their own service offerings or as part of their branding.

249    On 9 February 2019, she received an email from the artist. Ms Hanlan took her words to mean that SSGA did not have any grounds to make claims against MBL. She also commented “I thought the article that appeared yesterday was PERFECT! I look forward to meeting you very soon”, which gave Ms Hanlan further comfort that MBL had done nothing wrong and that the artist still intended to come to Australia for the launch event.

250    On 12 February 2019, the artist emailed Ms Hanlan. Ms Hanlan responded. The artist then replied. In her first email the artist asked whether she would travel to the HESTA and Cbus offices and told Ms Hanlan that she planned a couple of speeches. She also commented, “I had a very promising conversation with a party interested in bringing Fearless Girl to Israel and I did speak with my German client. Germany will unveil this Spring in March, April or May in Frankfurt instead of Berlin. I am very excited! Still working on Cape Town too”. Ms Hanlan took her words to mean that she was still working towards other replicas being unveiled. That gave her further comfort that MBL had done nothing wrong and that the artist was entitled to sell replicas of the New York statue to companies other than SSGA.

251    In Ms Hanlan’s response, she told the artist that they had decided to cancel planned events in Sydney and Brisbane at which the artist had agreed to speak. She also asked the artist whether SSGA had applied any legal pressure in relation to the Oslo or South African unveilings. Even though she had asked that question during their call in December 2018, Ms Hanlan wanted to double-check what the artist had told her. The artist responded the following day, saying that she thought the events should go ahead. Ms Hanlan took the artist’s response to be further confirmation that she thought SSGA’s claims were unfounded and that she was still encouraging MBL to proceed with the campaign launch and the surrounding events, despite SSGA’s allegations.

252    In that email the artist also said “you asked if SSGA would come after you...”. Ms Hanlan did not know what she meant by those words but it is possible she was referring to their discussion in mid-December 2018.

253    Further, on 12 February 2019, Gilbert + Tobin on behalf of SSGA sent a letter of demand to Simpsons solicitors. I will deal with the detail of the dealings between the lawyers in a later part of my reasons.

254    On 15 February 2019, the artist forwarded to Ms Hanlan an email that she appeared to have sent to SSGA on 21 December 2018 attaching a letter from the artist to SSGA. Ms Hanlan opened the letter but she did not read it in detail. She had not seen the letter previously.

255    On 17 February 2019, Ms Hanlan was blind-copied to an email from the artist to SSGA’s lawyer. Ms Hanlan regarded that email as further confirmation from the artist that she thought SSGA’s claim was baseless and that the artist was entitled to sell the replica to MBL for use in the campaign.

256    Ms Hanlan gave evidence that at no point during the negotiations of the art agreement did she understand that the artist was under restrictions that would prevent the sale of the replica to MBL or its use in MBL’s campaign. She relied on the artist’s assurances and Mr McDonald’s advice that MBL could use the replica for the campaign. She gave evidence that she did not, and never intended to, pressure, persuade, procure or induce the artist to breach her contract with State Street (US). And she said that it never crossed her mind that anyone would associate MBL’s campaign with SSGA due to the presence of the replica as part of that campaign.

257    Ms Hanlan also gave evidence concerning the launch event held on 26 February 2019 at Federation Square.

258    The launch event involved a breakfast, including speeches and a question-and-answer session with panellists, before the unveiling of the replica. Questions were to be posed to the panellists by some girls from a local school, Melbourne Girls’ College.

259    It would seem that a list of possible questions was developed between OGB and Ms Hanlan on 12 February 2019 including one dealing with women in leadership positions “in your company”.

260    On 19 February 2019, Ms Hanlan sent an outline of the event to the principal of the school. The event outline included some example questions although these questions were intended to be “thought starters” and it was said that the girls should ask the questions they wanted to have answered. The briefing was in the following terms:

WORKPLACE EQUALITY / EQUAL PAY - BREAKFAST EVENT

Tuesday February 26th, 7.15am, Zinc, Federation Square

Melbourne Girls College Briefing

About Maurice Blackburn

Maurice Blackburn is one of Australia’s leading social justice law firms. In its 100 year history, the firm has contributed to some of Australia’s most influential legal decisions - from campaigning for the 40-hour working week; fighting for indigenous land rights and representing asylum seekers (including children and babies living in detention around Australia). Maurice Blackburn is passionate about gender equality and is committed to shifting public perception to put equal pay firmly back on the agenda for individuals and organisations.

About the event

Every International Women’s Day, conversations about gender equality flare up. Talking is important, but so is action. The purpose of the breakfast panel discussion will be to talk about what is being done - and what more should be done - to close the gender pay gap and to hold the panel members accountable for what they’re doing in their respective roles to champion equality. It should be an active, lively discussion about what needs to be done – not just more talking about the issue.

The panel be will hosted by Jamila Rizvi. Contributors are still TBC but are likely to include:

    Representative of Cbus

    Representative of HESTA

    Victorian Minister for Women Gabrielle Williams

    A well known personality passionate about gender inequality - name TBC

Young people are going to be key in making governments and business think about, and do more, to reduce inequality in the workplace. We want you to have the opportunity to ask some of the tough questions and to hear from you about what you think some of the solutions might be.

About gender inequality and the gender pay gap

The gender pay gap is the difference between men and women’s earnings, as a percentage - so how much less than a man does a woman earn. In 2017-2018, the total, full-time gender pay gap was 21.3%, meaning that men working full time earn around $25k more than women working full time.

While things have been improving, the World Economic Forum says that, globally, this gap won’t close for another 200 years - unless government, business and individuals force change, faster.

The pay gap is a complicated issue and one that is influenced by many factors, including:

    Discrimination and bias in hiring and pay decisions - which means choosing men over women for a job, even if they have the same experience or qualifications; or paying a man more than a woman for doing the same job

    Fewer women in senior leadership or board level roles - this can be because of the above inherent bias in giving promotions; or due to women being out of the workforce while they have and take care of children

    Female-dominated industries attract lower wages - industries like childcare or aged care have a large female workforce and are paid much less than other industries

    Women do far more unpaid caring and domestic work than men

    Lack of work flexibility to accommodate caring and other responsibilities, especially in senior roles - limiting women’s progress in some workplaces.

Some questions to think about

We want you to ask the questions that are important to you, but to help you think about the types of areas for discussion we’ve outlined some thought starters below. We want to make sure the discussion is about action - not just talk. The questions for the panel should be developed by the students, based on their own pers [sic]

Example Questions:

    Every year International Women’s Day comes around and everyone talks about gender equality, but the gender gap doesn’t close. What is going to be done this year? More talk or more action?

    Brands like yours (Hesta, cbus and Maurice Blackburn) love to use International Women’s Day to promote a message of equality – but what do you do to promote equality on the other 364 days of the year?

    What is your business doing to close the gender pay gap?

    What is your government doing to close the gender pay gap?

    How many women are in leadership positions in your company? Do you think this is enough?

    Flexible working sounds good but what does it actually mean in your company?

    What should government do to enforce more flexible working policies?

    How can you be sure your male colleagues are paid the same as you? Salary is behind closed doors. How can you get it out in the open?

    If you were prime minister with an unlimited budget tomorrow, what initiatives would you put in place to close the gender pay gap?

    In your opinion what is the single biggest challenge facing women in the workplace?

    In your opinion what is the single most important thing that needs to change in order to close the gender pay gap?

    Have you ever felt discriminated against based on your gender? What did you do?

    Have you ever been a victim of gender bias at work? What did you do?

    What is the bravest thing you have ever had to do to stand up for equality?

    Do any of the panel have children? If so, how will you be raising your daughters and sons to be fearless in their pursuit of gender equality?

Some other tips and suggestions!

    Ask the questions YOU want to have answered

    Is there someone in particular you are directing this question at?

    Develop 5 - 8 questions each

    Our host will also be asking questions as well and helping make sure the discussion flows well

    Do you / your family have any personal experiences of gender inequality you want to share with the panel / audience?

Media

There may be some media present at the event who may want a short interview with you afterwards. All requests will be put to you directly by a member of the Maurice Blackburn or One Green Bean press team. It’s 100% your choice where you want to speak to them or not. You will also be asked to sign a consent form allowing any images / footage of you to be used on Maurice Blackburn channels or within editorial media. Please let us know if you have any questions or concerns about this.

261    There was subsequently some discussion with representatives of HESTA and Cbus about which questions would be put to which panellists. Ms Hanlan did not put forward any of those questions with the intention of generating a discussion specifically about women on boards. She did not want to focus at all on the topic of women on boards, not because of the restrictions relating to corporate governance in the art agreement but because it would risk alienating the majority of people that the campaign was aimed at. Only a small minority of women work at the elite level of company boards. Ms Hanlan thought that a focus on that minority would likely limit the relevance to the majority and the impact of the campaign.

262    Ms Hanlan said that it did not cross her mind at all at the time or at any other time in the lead up to the launch event or after it that any question about women in leadership could fall within the restrictions on use in corporate governance in the art agreement. She had assumed that the artist’s permission to use the replica as part of the campaign and to bring attention to the issues of pay inequality and gender diversity enabled them to talk freely about those issues, including women in leadership positions.

263    On 21 February 2019, Ms Hanlan sent an email to OGB and copied to the artist dealing with a plaque mock up. In that email she stated:

Also lets assume that we couldn’t get the plaque done before Tues. Can we get some sort of temporary signage erected near FG at Fed Square that contains the words of the plaque along with a disclaimer – I want to make sure we don’t lose the launch opportunity to promo our brand and involvement.

264    On 25 February 2019, Ms Samantha Gilligan, events manager for MBL sent an email to Ms Pantelidis dealing with the questions:

I have worked with Cbus & HESTA they are ok with the below questions, those highlighted are the new questions, you could quite easily answer 2. Did you want to answer any of them or stick to paternity leave & unsconscious bias?

Question for David & Debby from Ruby: How have you closed the gender pay gap at your workplace?

You could respond to this one: The firm has also taken decisive action to close the gender pay gap by improving transparency – including removing restrictions on discussing remuneration with colleagues (if employees desire) – and developing one consistent and transparent classification structure for employees.

Question for all panellists from Grace: How have you encouraged more women in leadership positions?

You could also respond to this one: We actively encourage women at all levels, among our achievements we have

    achieved 50 per cent female representation on its board;

    promoted 97 women (76 per cent of promotions) – some while on parental leave;

    welcomed 94 per cent of employees back to work after primary parental leave;

Question for David & Debby from Ruby: Investment management has traditionally been a male dominated industry how are you looking to foster greater opportunities for women?

Question for David & Debby from Jade: What positive impacts have you noticed for everyone at work when you create a more inclusive, flexible and respectful workplace?

Question for Felicity from Grace: How do you encourage men to take paternity/carers leave instead of women?

Question for Felicity and Dee from Jade – Society, tradition and culture could be roots of Gender discrimination. Sometimes this way of thinking can unknowingly affect someone’s judgement. Even though it’s hidden and hard to spot – how and what are you doing to tackle unconscious bias?

Internally we have run training CLE relating to unconscious bias for all staff and encouraged all staff at all levels to attend. We now also practice blind recruitment, meaning we remove identification details from resumes and applications. This ensures we’re evaluating people on their skills, strengths and experience as opposed to factors that may lead to a biased appointment.

Let me know.

265    On the morning of the launch event on 26 February 2019, Ms Hanlan met the artist at the venue. She did not see the artist’s speech ahead of the launch event and they did not discuss what the artist intended to say.

266    In her speech at the breakfast event, the artist, after some introductory remarks, noted that the New York statue is no longer in front of Charging Bull, but “stands strongly on her own” in front of the NYSE, which is now run by a woman. The artist then said: “it’s is a very, very important day for Australia. Today we unveil Fearless Girl, a global symbol of gender diversity and collaboration.

267    After a discussion about how men and women “balance” each other, the artist said:

I would like to commend Maurice Blackburn, Cbus and HESTA for demonstrating their dedication to diversity and equal pay through their gift of Fearless Girl to the people of Australia … May she stand as a symbol of supporting women in leadership positions, the education of women, education in the workplace for the prevention of prejudice, equality, equal pay and the general wellbeing of women. Though created for women, the ideas behind Fearless Girl benefit us all. Men and women working together create a highly efficient whole.

In March 2017, this bronze child challenged the financial community to change. This male dominant community of Wall Street had become known as the Old Boys Club and a place where women had difficulty rising up the corporate ladder, where many were excluded based on gender. Fearless Girl made a statement about the increased importance of women in business. She clearly asserted her intent to fully participate as an equal partner.

268    The artist then noted that Fearless Girl was a collaborative effort and said:

… Fearless Girl was conceived by a handful of people. We determined the clothing that she would wear, the position that she would assume, and the expression on her face. She is modern and strong but not angry. She is feminine and determined. … Fearless Girl tells every little girl she can be and do anything she can imagine, regardless of gender stereotypes. Fearless Girl inspires all of us to be brave in the wake of adversity. She reminds us that genders must work together. In fact, she demands it.

Though her roots are financial, Fearless Girl transcends finance as a symbol of empowerment worldwide. The original casting was placed on Wall Street by State Street Global Advisors of Boston, Massachusetts, USA. State Street brought to light the many gender diversity studies and brought it in to the general public’s forum, right. So that everyone were aware of the gender diversity studies. Has anybody read these gender diversity studies? Anybody googled gender diversity study? The benefits?… Very few of you. So, I would challenge you to go online and read all of the statistics that so many people have come up with. It’s really inspiring.

These studies proffer undeniable evidence for the benefits of women in the workplace. Since that first unveiling in 2017, State Street has persuaded 300 companies worldwide to incorporate at least one woman on their all male boards. MSCI found that at least three women at the board level to be the magic number for maximum corporate return. Catalyst Research stated companies with more women in executive positions realised increase in returns to investors of a whopping 34%. They found that companies with the highest number of women on the board outperformed their peers by 53% return on equity, a 42% return on sales and a 56% return on invested capital. These numbers are staggering. There are too many studies performed by too many different companies for us to ignore the facts they present.

… Employers must utilise the resource women represent and more importantly capitalise on the improved performance and increase profits gained by a fully equalised business community. Those employers who do will capture the leading edge within their industry and keep it. Studies show companies profit when they incorporate women at any level. Smart management will keep women in the workplace by offering profit sharing, equal pay for equal work, health plans customised to the needs of women, have flex time and day care.

Though the promise of increased profits entice, most companies who aim for diversity fail. It is not enough to set a goal. The mentality of the company and its management must change. Successful companies are those where individuals feel they can contribute freely. Management should be made aware of the diversity research in order to establish a creative environment. … The more knowledge management receives, the more inclined they will be to seek the best candidate for the job, regardless of gender. And to look for potential employees in a variety of non-traditional markets.

Women comprise 50% of the workforce. Yet in Deloitte’s analysis of nearly 7000 companies in 60 countries, women held only 15% of all board seats globally in 2017, which was up from 12% from the number of board sets they held in 2015. Women represented just 17.3% of directorships out of the 2,451 companies in the [MSCI] ACWI index companies.

In Australia, the Institute of Company Directors found the latest percentage of women on ASX200 boards to be just 29.6%. Three or more women is the number required to create a “critical mass” and thus foster better performance. In November 2018, SBS news reported the Workplace Gender Equality Agency recorded a gender pay gap of 21.3% here in Australia. This is compared to a global gap of 37% established by the World Economic Forum as reported this past December. There is not a single country where women are paid as much as men. Not one single country. Laos in South East Asia is the closest to achieving parity, with women earning 91% of what men earn.

We are moving slowly. But the [World Economic Forum] projects another 202 years. 202 years before pay parity is achieved. Diversity in decision making is an idea whose time is long overdue. And it’s an idea that is key in closing the wage gap. Women selected for a mentoring program and potential promotion reported feeling that mentoring was helpful, a Harvard Business Review study found. But these women often passed over for promotion. Men typically promote other men. But rest assured, women promote other women.

In light of that, women should consider working for a company that is diverse at the board level to maximise upward mobility. By demanding diversity in leadership we can, collectively, achieve pay parity through encouraging female leadership and garnering higher paid positions for women. Research also shows that women don’t ask for what they are worth. Do your research and ask for the salary your position deserves. Why the discrepancy in pay? Centuries of socialisation deemed man take the lead. Never questioning whether we might make more effective decisions together.

269    The artist then discussed the importance of children’s education, including STE(A)M studies in preparing women for leadership, traditional gender roles and studies about the neurological, biological and behavioural differences between the genders. The artist then made some concluding remarks on gender diversity and its global benefits.

270    After the breakfast event, they moved outside to where the replica was located for the unveiling. Both the artist and Mr Varghese made some brief statements.

271    After some introductory remarks the artist said:

It is just such an important day for Australia to bring Fearless Girl here as a symbol of what we are aiming for … Fearless Girl will become a visual symbol for a new era. The pendulum slowly swings in favour of women. Gender diversity studies made public by State Street Global Advisors at our original unveiling in New York are irrefutable proof that companies with diversity through mixed gender produces superior work environments and better and more profitable decisions.

This is a very important day, yes it is. Today we unveil a limited edition casting of Fearless Girl. A global symbol of gender diversity and collaboration.

272    The artist discussed the benefits of men and women working together, including better decisions and increased profitability and then said:

I would like to commend Maurice Blackburn, Cbus and HESTA for demonstrating their dedication to diversity and equal pay through their generous gift of Fearless Girl to the people of Australia. May she stand as symbol of supporting women in leadership positions, the education of women, education of the workplace for the prevention of prejudice, equality, equal pay and the general wellbeing of women. The ideas behind Fearless Girl benefit all of society. Men and women working together create a highly efficient whole.

273    After a discussion of the biological differences between men and women, the artist said:

MSCI found at least three women at the board level generates maximum corporate returns. Companies with more women in executive positions realised an increase in returns to investors of a whopping 34%. … They found that companies with the highest number of women on boards out performed their peers by 53% return on equity, a 42% return on sales and a 56% return on investor capital. These numbers are staggering. Too many studies performed by too many different companies for us to ignore the fact companies profit when they incorporate women at any level. Smart management will keep women in the workplace by offering profit sharing, equal pay for equal work, health plans customised to the particular needs of women

274    The artist then discussed the importance of educating children to respect gender differences, returned to her discussion about the gender diversity studies that showed increased returns to investors and increased profits when companies incorporate women, further discussed educating children to disregard gender stereotypes and made some closing remarks.

275    After the unveiling, the artist said to Ms Hanlan words to the effect of “That was great. That went really well.” The artist did not then, or at any other time, express any concern to Ms Hanlan about any of the comments made during the speeches or the panel discussion.

276    After the unveiling the artist went back to MBL’s office. She gave a presentation to MBL staff, similar to the one she gave at the breakfast event. Ms Hanlan then took the artist to HESTA’s and Cbus’ offices, which are located in the same building, where she delivered presentations to staff. Ms Hanlan did not stay for the artist’s presentations, but she did meet her later to take her out for dinner. The artist did not express any concerns to Ms Hanlan about anything that had happened that day. In particular, she did not say anything to Ms Hanlan to suggest she thought MBL’s use of the replica was outside of the scope of the permissions granted in the art agreement, nor did she give her any indication that she thought MBL’s use might be an issue for her as regards her agreements with State Street (US).

277    Let me pause at this point to make several observations.

278    First, I have gone into considerable detail concerning Ms Hanlan’s conduct and state of mind because such matters are relevant to State Street (US)’s claim concerning the tort of interference with contractual relations. Indeed, State Street (US) says that Ms Hanlan was the guiding mind of MBL for relevant purposes. I will return to this later.

279    Second, State Street (US) has made much play about the artist’s 21 December 2018 email and the 3 to 10 January 2019 emails between the artist and Ms Hanlan, as if they established a “guilty” mind or a mind put on notice. But I would say now that State Street (US) has exaggerated the significance of these communications and Ms Hanlan’s response or non-response thereto. I will return to these matters later.

280    Third, in my view State Street (US)’s case concerning this tort cannot stand with the evidence of Mr McDonald which I have no reason to doubt. Let me now turn to it.

The dealings involving Mr McDonald

281    It is important that I deal with Mr McDonald’s evidence separately given that he negotiated the art agreement and his state of mind is relevant to my consideration of the tort of inducing breach of contract.

282    Mr McDonald had significant experience in intellectual property matters, particularly in relation to copyright, including at the Australian Copyright Council and as a senior lawyer. Further, he had worked at Simpsons, a specialist arts and intellectual property firm, for over eight years. His clients included publishers and collecting institutions, including major Australian museums and galleries, as well as well-known and aspiring writers, photographers, artists and sculptors. He frequently advised artists and sculptors, as well as organisations such as museums and galleries on commissioning agreements, and drafted and negotiated many such documents for clients.

283    Let me step through key aspects of his involvement.

284    On 22 June 2018, Mr McDonald received an email from Ms Kris Darmody, his former colleague at Simpsons, introducing him to Ms Hanlan. Later that morning, he received an email from Ms Hanlan introducing him to Ms Sheehan. In a further email to Mr McDonald that day, Ms Hanlan summarised the advice she needed as follows:

Kara will be in touch but the topline is:

The artist is Kristen Visbal - who created the Fearless Girl statue in NYC on behalf of a corp client.

She is now reproducing 25 copies and some of these have been unveiled already (ie Norway) with others on the way shortly.

We are in discussions with her to buy one – we’d do this as a partnership with 6 other organisations. Kristen has provided me with a draft copy of an agreement she prepared for another client to give some insight into what we can and cant do with it. My understanding is that we can unveil and discuss her but we can’t use the image of the girl as a trademark/brand mark. I really need to understand based on the current agreement- what we can and cant do and then see if that fits with our plans. Im in the process of summarising what I need to be able to do with it as part of my planned campaign and that will come over with Karas brief etc.

285    In a further email from Ms Hanlan to Mr McDonald, she forwarded the following extract from an email she had received from the artist:

State Street Global Advisors of Boston, Massachusetts owns the trademark for supporting women in leadership positions under the Fearless Girl name. I own the copyright on the work. The Australian coalition is able to freely announce that the sculpture has been gifted to the people of Australia. The restriction is that the group would not be able to use the figure as a brand identity.

286    At that time Mr McDonald was familiar with the New York statue.

287    Further, on the same day Ms Sheehan forwarded to Mr McDonald an email between Ms Hanlan and the artist, together with an email Ms Hanlan had sent to Ms Sheehan outlining what Ms Hanlan wanted to do with the replica.

288    Ms Sheehan’s email attached an email from the artist to Ms Hanlan dated 18 June 2018, which had been forwarded to Ms Sheehan on 21 June 2018, that stated she was creating a limited edition of 25 full size reproductions of the New York statue. It also stated in relation to certain replicas in that limited edition reproduction that “We unveiled her in front of the Grand Hotel in Oslo, Norway last March and she faces the Parliament building. Another European unveiling is scheduled for October and, in August, we will unveil at a boarding school representing 27 countries. Three other unveilings are scheduled”.

289    The artist’s email stated that “State Street Global Advisors of Boston, Massachusetts owns the trademark for supporting women in leadership positions under the Fearless Girl name. I own the copyright on the work”. Further, the artist included the notes for purchase that the artist stated had been drafted by her lawyer, namely, Ms Wolff, for another purchaser and also attached a draft art agreement.

290    Ms Sheehan’s email also attached an email from Ms Hanlan to Ms Sheehan dated 22 June 2018 that included the following:

What we want to do with the Girl

    We could have 5-6 partners on this project with us so the agreement needs to be extended to them all

    We will want to put all of our logo its [sic] on the plate and a small statement

    We will want to be able to talk about the girl in our publicity and marketing - why we brought her over, what she represents, who we have partnered with etc - this may be on our website and social media etc

    We may want to take her on a road show to regional and rural schools and communities across Vic (and maybe other states)

We don’t want to use the image of the girl as a trademark etc

291    Mr McDonald reviewed these documents. The notes for purchase included the following statements, all in red font, following the words “PER NANCY” which he understood to mean that the artist’s lawyer had written those words:

You can promote that the Coalition acquired the work and celebrate that it is being placed in Melbourne because you support her message and include promotion in the press and in all media, including social media. You can use the coalition name as the acquirer, Kristen Visbal’s name as the Artist, a copy of the work and the title of the work as “Fearless Girl”. The name and artwork Fearless Girl just can not be used in a way that would make someone think it’s the coalition’s brand. If you refer to it as the artwork, that is not a branding use. Do not use it in an “ad” for the Coalition’s services in general not connected to the placement of the work.

Example, you could not make a corporate branded product, hat, tote bag, and other corporate giveaways with the artwork and a company logo, but you could, with Kristen’s permission, create merchandise like that with just the artwork.

292    Mr McDonald noticed that the notes for purchase also included a note in a paragraph titled “trademark” stating that the world wide Fearless Girl trade mark belongs to State Street (US). The following wording was inserted in red, which he again understood was wording that had been inserted by Ms Wolff, namely that the Fearless Girl trade mark had been registered by State Street (US) “to promote gender diversity and in particular corporate governance and gender diversity in the financial sector”. At the end of the notes for purchase the artist offered to MBL the services of Ms Wolff “who co-authored the agreement I have with State Street Global Advisors in clarification of promotion so that you are protected” to MBL.

293    Later that day, Mr McDonald had a telephone conference with Ms Sheehan. Ms Sheehan told him that MBL wanted to purchase a replica of the New York statue to unveil as part of an upcoming campaign for equal pay, scheduled for September 2018. She told him that MBL was looking to interest other organisations in coming on board for the MBL campaign. She also told him that some restrictions on use of the replica had been flagged by the artist and she needed Mr Edwards to ensure that the replica could be used for the purposes identified by Ms Hanlan. Ms Sheehan instructed him to proceed with amending the draft art agreement with amendments that would reflect MBL’s needs and any other amendments that would best protect MBL.

294    Now Mr McDonald, as part of reviewing the draft art agreement that Ms Sheehan had forwarded to him, considered that it needed some clarification. As he perceived it, there appeared to be an inconsistency. On the one hand, the exhibition, publishing and promotion clause permitted the purchaser to “reproduce the Artwork to promote acquisition of the Artwork and may include ... the purchaser’s name. Promotion may include print material, website, press and media coverage and social media”. But on the other hand, the no branding use clause provided that “The Artwork shall never be used, or authorised for use, as a logo or brand. The artwork shall never be displayed on “branded” material, in any medium ... including without limitation any merchandise, products, or printed or electronic material, that features a trademark, service mark, trade name, tag line, logo or other indicia identifying a person or entity except for Kristen Visbal or State Street Global Advisors or its affiliates”.

295    In Mr McDonald’s view at the time, the prohibition in the no branding use clause on displaying the artwork, which he understood to be the replica itself and images of it, on any branded material required clarification. He thought that a blanket prohibition on displaying images of the replica on branded material in the no branding use clause had to be unintended, given:

(a)    the express wording of the exhibition, publishing and promotion clause;

(b)    the statements to the contrary in the notes for purchase;

(c)    the statements of the artist to the contrary in her email referred to above; and

(d)    that the artist was, by negotiating the sale to MBL, apparently able to sell to corporations, which would necessarily want to publicise that they supported the values embodied in a replica of the New York statue.

296    He thought that the no branding use clause must therefore instead be directed at prohibiting the use of the words Fearless Girl and the replica or images of it, being the artwork, as a brand in a commercial sense or for MBL’s service offerings, rather than in connection with the MBL campaign.

297    In this regard, he noted that the no branding use clause:

(a)    commenced with reference to the trade mark owned by State Street (US) in connection with gender diversity goals and in corporate governance;

(b)    expressly permitted a purchaser to identify the replica by its title and to use images of it for “newsworthy” articles in any media; and

(c)    stated that the restrictions that followed in the rest of the clause were to preserve the “integrity” of the replica.

298    Now insofar as the “integrity” of the artwork is concerned, Mr McDonald was familiar with artists not wanting their work or the “messages” in their work being diminished by inappropriate and unauthorised commercial usage.

299    Mr McDonald concluded at the time that the artist must have intended to allow the replica or images of it to be used by MBL to raise awareness of gender diversity and equal pay issues, but that she would prohibit use of the replica or images of it by MBL as a brand and in relation to business activities that were unconnected with raising such an awareness.

300    Mr McDonald looked at the electronic file properties of the draft art agreement, which revealed that the author of the document was a “Nancy E. Wolff”, who he understood to be the lawyer advising the artist. He conducted an internet search for “Nancy E. Wolff” and found that she was a partner at Cowan, DeBaets, Abrams & Sheppard LLP which, from its website, was apparently a large New York law firm of some 30 partners and associates which focused, inter-alia, on entertainment and intellectual property law. Further, he found that she was stated to have extensive experience in copyright and trade mark law in the United States, including in “Photography/Arts/Design”.

301    But Mr McDonald did not communicate with Ms Wolff directly until 31 July 2018. Prior to that time, he was corresponding with Ms Hanlan and Ms Sheehan, providing them with advice and proposed amendments to the draft art agreement in response to communications to them from the artist who was in turn being assisted by Ms Wolff.

302    As a result of the considerations referred to above and having regard also to some other areas that he had identified needed amending, he marked-up changes to the draft agreement and sent these to Ms Sheehan and Ms Hanlan on 27 June 2018. These changes included the following.

303    First, after subclause (3) in the no branding use clause he added two further subclauses, prefaced with the words “For clarity”, that is, clarifications to the no branding use clause, setting out specifically what he understood MBL and its campaign partners, the co-contributors for the purpose of the agreement, wanted to do with the replica as part of the MBL campaign based on the emails Ms Sheehan had sent on 22 June 2018. The full text of the no branding use clause with mark ups became the following:

“No Branding Use”: The phrase “Fearless Girl” has been registered as a trademark by State Street Global Advisors of Boston, Massachusetts, USA in connection with gender diversity goals and in corporate governance. Purchaser Client may identify the artwork by its title “Fearless Girl” and the title of the Artwork and an image of the Artwork may appear in any media as a newsworthy placement however, the following restrictions regarding the Artwork will apply to preserve the integrity of the Artwork:

(1)     The Artwork shall never be used, or authorized for use, as a logo or brand or on or in merchandising. The Artwork shall never be displayed on “branded” material, in any medium now know or hereafter devised, including without limitation any merchandise, products, or printed or electronic material, that features a trademark, service mark, trade name, tagline, logo, or other indicia identifying a person or entity except for Kristen Visbal or State Street Global Advisors or its affiliates.

(2)    The Artwork may not be used by the Client in connection with gender diversity issues in corporate governance or in the financial services sector.

(3)    The Artwork may not be used by the Client for the promotion of any political party, politician, activist, or activist group.

For clarity, however: nothing in this clause prevents the Client or co-contributors to the cost of the Artwork from:

a.    talking about the Artwork (including why it was purchased, what it represents to them, who has partnered with the purchase and how the Artwork reflects gender diversity goals); or

b.    taking the Artwork on a roadshow within Australia and showing and discussing it in public (and particularly in regional and rural schools and communities).

304    Further, in relation to subclause (2) in the no branding use clause he commented:

MB or co-contributors may have concerns around this and may want to negotiate for deleting this proviso. Alternatively, they will need to be aware of - and abide by - the limitation.

305    Now even though Mr McDonald had been instructed by Ms Hanlan that MBL did not want to use the image of the replica as a trade mark, he inserted this comment to highlight the prohibition to MBL. He did so in case the MBL campaign was still in the planning stages and Ms Hanlan might in future consider using the image of the replica to advertise MBL’s legal services, although he had no basis to think she would want to do that. He also did so to flag to Ms Hanlan that she should ensure that other people working with MBL would not, for example, look to use the replica, its name or its image as a brand for MBL’s services. And he also did so in case there had been discussions with potential co-contributors of which he was not aware.

306    Further, Mr McDonald commented on the credit clause. The credit clause and his note were the following:

Credit: It is understood that a plaque with the attribution “Fearless Girl by Kristen Visbal” is to be delivered with the Artwork. The Client agrees to install the plaque within 10 feet of the Artwork. The Client further agrees that the plaque will accompany the Artwork should it be relocated at any future date(s).

-

This may need to be amended if the names and logos of [MB] and the contributors are to be included. Otherwise, it would be prudent to include a clause such as “The Artist and the Company acknowledge that the Client may install along with the plaque a separate plaque acknowledging the Client and co-contributors to the cost of the Artwork”.

307    On 29 June 2018, he received a follow-up email from Ms Hanlan that stated:

So we’re happy that we’d be able to use the fearless girl the way we needed to and also for our partners?

308    He responded that same day as follows:

Our deletions to subclause (1) of the clause on page 4 in relation to “No-Branding Use” remove the issue about referring to the work in (among other things) MB or other newsletters or on an MB website, each of which would clearly be branded with the firm’s name and logo.

The additional wording after subclause (3) is to remove any ambiguity as to what MB or the co-contributors are permitted to do with the work, but let us know if there is anything extra you want to specify here. Note also our comment inserted as “IMcD3” at the end of subclause (2), including that MB may want to negotiate for the deletion of this subclause.

The amendments we have suggested reflect our instructions, but we particularly look forward to your assessment of whether there is anything else that should be included (or excluded) here.

309    On 3 July 2018, he received two emails from Ms Hanlan regarding his proposed amendments to the draft art agreement. In the first email, Ms Hanlan instructed him to prepare text that she could send to the artist to explain each of the marked-up changes. In the second email, Ms Hanlan set out her instructions in relation to his proposed amendments.

310    In relation to his comment on the wording of subclause (2) of the no branding use clause, Ms Hanlan stated:

as per my earlier email this is my biggest concern - I think we need to ask her if we can a) remove it or B have her explain what the intent is here ie what is corp governance and what is fin services - we will have superannuation providers contribute and are they tech fin services etc

311    In relation to the credit clause, Ms Hanlan stated:

I want to make sure that we can put our logos on the plaque - MB and any other contributors - this is very important as we need to be able to show who has brought the girl to Melbourne and why.

312    He sent an email to Ms Sheehan and Ms Hanlan to the effect that he would implement the various changes discussed in the email exchanges during that day.

313    On 4 July 2018, he emailed a revised version of the draft art agreement to Ms Hanlan and Ms Sheehan. In that version he deleted subclause (2) of the no branding use” clause entirely. In the credit clause, Mr McDonald included words that the plaque will bear the “logos and names” of MBL and the co-contributors. The amended credit clause was as follows:

Credit: It is understood that a plaque with the attribution “Fearless Girl by Kristen Visbal” is to be delivered with the Artwork and that the plaque will bear (or the Client may organize for the plaque to bear) the logos and names of the Client and the co-contributors to the cost of the Artwork. The Client agrees to install the plaque within 10 feet of the Artwork. The Client further agrees that the plaque will accompany the Artwork should it be relocated at any future date(s).

314    He attached to the same email the table of amendments summarising the amendments to the draft art agreement and why they had made them, with the intention that this was to be forwarded to the artist with the revised draft art agreement.

315    In the table of amendments he included the following in relation to the amendments to the no branding use clause:

The amendments here reflect the needs of MB and co-contributors to the payment (which may include Australian superannuation funds) to use images on their websites and in newsletters, which will carry relevant branding (including in URLs).

Our view is that the interests of the Artist are appropriately protected through the undertaking not to use the Artwork as a logo or brand or for the listed promotional purposes.

We welcome further discussion on this clause to ensure that, while the Artist’s interests and concerns are protected, MB and the co-contributors (each of which is a commercial entity and some of [which] will be organisations in the “financial services” sectors) are not restricted from using the Artwork in the ways that are listed.

316    Given that subclause (2) of the no branding use clause had specifically referenced financial services, in addition to corporate governance, he wanted to flag to the artist and her lawyer that MBL was likely to be partnering with financial services companies in the campaign.

317    In relation to the exhibition, publishing and promotion clause, he noted:

MB should be able to rely on available exceptions under copyright law (which are generally narrower than under US law) in the same way as third parties are entitled to do so.

The amendments to authorise third party use is to ensure that promotion and publicity can be made through third party providers and platforms, including social media. Our view is that the Artist's interests are still properly protected through the restraint on the purposes for which such reproductions and authorisations may be made - namely, publicity and promotion.

318    In relation to the credit clause, he noted:

The amendment reflects that MB and the co-contributors to the cost of the Artwork will want to have their donations attributed. Happy to discuss further how the Company and the Artist would like to deal with this issue.

319    On 18 July 2018, Ms Sheehan forwarded to Mr McDonald an email from the artist dated 13 July 2018 that attached a revised version of the draft art agreement. This was in response to Mr McDonald’s amendments and the table of amendments that had been forwarded to the artist by Ms Hanlan on 4 July 2018.

320    He noted that the artist’s covering email included the following statements:

We did note that your legal team removed the no branding clause which we have replaced. I am under contractual obligation with State Street to include that language in our agreement and the clause will have to remain. For your protection, any promotion of the work and your event should emphasize that the work is a “gift” to the people of Australia and is being used to highlight the 15.3% gender discrepancy in pay. The required no branding clause would prohibit logo use in conjunction with the work but, certainly, the name of each and every contributor should be clearly spelled out.

Remember that Fearless Girl stands for supporting women in leadership positions, equality of women, equal pay, education of women, education in the work place for the prevention of prejudice and general well-being of women. I am thrilled you are planning to tour with the work but, ask that in all cases she be used to promote these same gender diversity goals.

321    He also noted that the file name for the revised draft art agreement included the initials “nw”, that the comments were labelled with Ms Wolff’s name and that at the bottom of the email chain it showed that Ms Wolff had forwarded an email to the artist. Mr McDonald therefore assumed that the revisions to the draft art agreement had been made by Ms Wolff.

322    Ms Sheehan’s email to him stated “Rebecca is going to let us know her views on the changes to the branding clause - this may be a problem for us”. In a subsequent email to him on 18 July 2018, Ms Hanlan stated “Im just not 100% clear on what I can and cant do based on the feedback – I need some clarity from your end please”.

323    Mr McDonald responded to both Ms Sheehan and Ms Hanlan by email stating:

Let me review and get back to you tomorrow ...

My initial reaction, however, is that the clause she (or State Street) is insisting upon is going to be tricky for you and the other organisations, and perhaps one way to respond might be to give examples of what you want to do and ask whether these would be OK under her view of the clause.

324    His comment was directed to subclause (1) of the no branding use clause, which appeared to prevent use of images of the replica on any branded materials. This prohibition still made little sense to him.

325    The full text of Ms Wolff’s marked up changes is as follows:

“No Branding Use”: The phrase “Fearless Girl” has been registered as a trademark by State Street Global Advisors of Boston, Massachusetts, USA in connection with gender diversity goals and in corporate governance. Client may identify the artwork by its title “Fearless Girl” and the title of the Artwork and an image of the Artwork may appear in any media as a newsworthy placement however, the following restrictions regarding the Artwork will apply to preserve the integrity of the Artwork:

(1)    The Artwork shall never be used, or authorized for use, as a logo or brand or on or in merchandising. The Artwork shall never be displayed on “branded” material, in any medium now know or hereafter devised, including without limitation any merchandise, products, or printed or electronic material, that features a trademark, service mark, trade name, tagline, logo, or other indicia identifying a person or entity except for Kristen Visbal or State Street Global Advisors or its affiliates.

(2)    The Artwork may not be used by the Client in connection with gender diversity issues in corporate governance or in the financial services sector.

(3)    The Artwork may not be used by the Client for the promotion of any political party, politician, activist, or activist group.

For clarity, however: nothing in this clause prevents the Client or co-contributors to the cost of the Artwork from:

a.    talking about the Artwork (including why it was purchased, what it represents to them, who has partnered with the purchase and how their purchase of the Artwork supports reflects gender diversity goals); or

b.    taking the Artwork on a roadshow within Australia and showing and discussing the Artwork it in public (and particularly in regional and rural schools and communities).

326    In the revised version, Ms Wolff had reinstated the following wording into subclause (1) of the no branding use clause:

The Artwork shall never be displayed on “branded” material, in any medium now or hereafter devised, including without limitation any merchandise, products, or printed or electronic material, that features a trademark, service mark, trade name, tagline, logo, or other indicia identifying a person or entity except for Kristen Visbal or State Street Global Advisors or its affiliates.

327    Next to this clause, Ms Wolff included the comment:

This is required language per Artist agreement with State Street.

328    Ms Wolff also amended subclause (2) of the no branding use clause to read as follows:

The Artwork may not be used in connection with gender diversity issues in corporate governance or in the financial services sector.

329    Against this amended wording and in response to Mr McDonald’s editorial comment regarding MBL’s concerns with the subclause and the possibility of negotiating or deleting it, Ms Wolff included the comment:

This must be retained per Artist Agreement with State Street, this means that the artwork cannot be used to promote a company in the financial sector.

330    As to the credit clause, Ms Wolff had made some changes:

Credit: It is understood that a plaque with the attribution “Fearless Girl by Kristen Visbal” is to be delivered with the Artwork and that the plaque will bear (or the Client may organize for the plaque to bear) the logos and the names of the Client and the co-contributors who sponsored to the cost of the Artwork, with approval of Artist. The Client agrees to install the plaque within 10 feet of the Artwork. The Client further agrees that the plaque will accompany the Artwork should it be relocated at any future date(s).

331    Mr McDonald reflected on Ms Wolff’s amendments and her comments. Ms Wolff had not made any amendments to the subclauses he had inserted in the clarifications to the no branding use clause and neither she, nor the artist, had told MBL that it could not partner with a financial services company in the campaign, despite his table of amendments making it clear that co-contributors to payment would likely be financial services companies. In light of that, he read Ms Wolff’s comment “the artwork cannot be used to promote a company in the financial sector” as confirmation of his understanding that the replica, its name and images of it:

(a)    could not be used as part of a financial services company’s branding; and

(b)    could not be used in relation to such a company’s business activities unconnected with the MBL campaign; but

(c)    could be used by a financial services company (and indeed any other sort of company) provided it was being used to promote the MBL campaign or its involvement in that campaign.

332    He did not understand Ms Wolff to be saying in her comments or as a result of the amendments she had made that MBL could not partner at all with a financial services company for its campaign. Amongst other reasons, this was because such a position would have been at odds with what he understood the artist had said in the cover email to Ms Hanlan referred to above:

Remember that Fearless Girl stands for supporting women in leadership positions, equality of women, equal pay, education of women, education in the work place for the prevention of prejudice and the general well-being of women. I am thrilled you are planning to tour with the work but, ask that in all cases she be used to promote these same gender diversity goals

333    He nonetheless sought to ensure that how MBL intended to use the replica was made very clear to the artist and Ms Wolff by further amending the clarifications to the no branding use clause to make specific reference to financial services entities and expand the list of permitted uses.

334    He assumed that Ms Wolff would advise the artist if any of the uses he was proposing on behalf of MBL would conflict with the terms of the artist’s agreement with State Street (US) and that Ms Wolff would be responsible for managing the artist’s legal obligations with State Street (US). He also assumed that if any proposed use did conflict with the artist’s obligations, Ms Wolff would come back with further amendments to the draft art agreement or would tell him that MBL could not use the replica in that way.

335    Further, given the reference to a trade mark in the draft art agreement, at some point during the negotiations in July 2018, although Mr McDonald could not recall exactly when, he used the online trade mark search facility provided by IP Australia to clarify what trade mark rights State Street (US) had registered in Australia in relation to Fearless Girl. He found that State Street (US) had a registered word (not image) mark for the phrase “Fearless Girl” and that registration was for the following services in classes 35 and 36:

(a)    Class 35: Publicity services in the field of public interest in and awareness of gender and diversity issues, and issues pertaining to the governance of corporations and other institutions; and

(b)    Class 36: Funds investment; financial investment advisory services; financial management of donor-advised funds for charitable purposes; accepting and administering monetary charitable contributions; financial information.

336    Mr McDonald concluded that this registration would not affect MBL or the co-contributors, given his instructions from Ms Hanlan that she did not wish to use the words Fearless Girl, the replica or its image as a trade mark and that MBL and the co-contributors would merely want to use the words Fearless Girl to refer to or describe the replica itself in the context of the campaign. He believed that such a use was not a trade mark use, let alone trade mark use within the scope of the Australian trade mark registrations.

337    On 27 July 2018, Ms Hanlan sent an email to Mr McDonald stating:

Ill prepare the examples over the weekend and email them over and then we need to be able to get your thoughts on them based on your understanding of the agreement and then share them with Kristen. She rang me earlier this week and thought it should all be fine but we need to make sure! I’m trying to finalise partners and need to be sure we can use her in mkting and comms and PR.

338    Mr McDonald understood Ms Hanlan’s reference to using the replica “in mkting and comms and PR” to mean that MBL and the co-contributors would need to be able to publicise the campaign, which would involve using the image of the replica and the name Fearless Girl.

339    On 30 July 2018, Ms Hanlan sent an email to Mr McDonald stating:

I still don’t understand what the reference to not using financial institutions means - does that mean we can’t have a bank or a superannuation provider be a partner with us? Can you please explain this? At this stage we have Super funds on board and we are talking to NAB too.

340    Further, she set out in clearer detail what MBL needed to be able to do with the replica to publicise the campaign, including:

Social Media /Websites/Press Release

Use image of Fearless Girl on social media platforms – LinkedIn, FB, Twitter, Insta

Use of image of Fearless Girl on company website

Use of image of Fearless Girl used on press release around Equal Pay day

Copy

Cand creative executions could include something such as the below (tailored by each of the partners to reflect their own brand first)

MB as part of the Equal Pay Potential project are proud to be part of a campaign promoting gender pay equality. As part of this campaign MB along with its other partners have brought Fearless Girl to Australia as a commitment to championing this very important cause.

Imagery

Fearless Girl – insitu (ie wherever we unveil her on equal pay day)

Fearless Girl flanked by the CEOs of the organisations who have contributed to her coming to Australia

341    Further, she confirmed that:

My understanding is that we can’t lock up our logo (or any of the other partner logos) with the image of the girl - which seems fair and reasonable.

342    During a video conference with Ms Hanlan and Ms Sheehan later that day, Ms Hanlan said to Mr McDonald that neither MBL nor potential co-contributors were interested in using the replica to promote their services or financial services, but rather that the replica was solely to be used as part of the campaign.

343    Mr McDonald said to Ms Hanlan and Ms Sheehan that his understanding of the no branding use clause did not prevent organisations such as superannuation funds and banks becoming co-contributors and using images of the replica as part of the campaign, but it would prevent such organisations, as well as MBL, from using the replica or its image as a brand in relation to business activities that were unconnected with the campaign.

344    He said to Ms Hanlan and Ms Sheehan that to get further clarity and assurance that MBL and the co-contributors could use the replica as part of the campaign, the best way to proceed would be for him to expand the clarifications to the no branding use clause to specifically set out the uses of the replica that Ms Hanlan had identified to him in her email earlier that day.

345    Following his discussion with Ms Hanlan and Ms Sheehan, Mr McDonald amended the draft art agreement by accepting almost all the marked-up changes made by the parties to date and, as they had discussed, including additional subclauses in the clarifications to the no branding use clause.

346    His marked up version of the no branding use clause was as follows:

“No Branding Use”: The phrase “Fearless Girl” has been registered as a trademark by State Street Global Advisors of Boston, Massachusetts, USA in connection with gender diversity goals and in corporate governance. Client may identify the artwork by its title “Fearless Girl” and the title of the Artwork and an image of the Artwork may appear in any media as a newsworthy placement however, the following restrictions regarding the Artwork will apply to preserve the integrity of the Artwork:

(1)    The Artwork shall never be used, or authorized for use, as a logo or brand or on or in merchandising. The Artwork shall never be displayed on “branded” material, in any medium now know or hereafter devised, including without limitation any merchandise, products, or printed or electronic material, that features a trademark, service mark, trade name, tagline, logo, or other indicia identifying a person or entity except for Kristen Visbal or State Street Global Advisors or its affiliates.

(2)    The Artwork may not be used in connection with gender diversity issues in corporate governance or in the financial services sector.

(3)    The Artwork may not be used by the Client for the promotion of any political party, politician, activist, or activist group.

For clarity, however: nothing in this clause prevents the Client or companies or firms who co-contributeors to the cost of the Artwork (and including any bank, superannuation fund or other financial services entity) from:

a.     talking about the Artwork (including why it was purchased, what it represents to them, who has partnered with the purchase and how their purchase of the Artwork supports gender diversity goals); or

b.    taking the Artwork on a roadshow within Australia and showing and discussing the Artwork in public (and particularly in regional and rural schools and communities); or

c.    referring to or using (and, where relevant, authorizing use of) images and footage of the Artwork:

i.    in their social media (including, without limitation, Face Book, Twitter, Instagram, YouTube and Linked In);

ii.    on their websites; and

iii.    in their newsletters or other publications (whether or not such also carry their logos or other branding, and including in media releases and other promotion around “Equal Pay” issues, including for Equal Pay Day in Australia and the Equal Pay Potential Project);

or

d.    using images or footage of the Artwork in situ in relation to the above and which include images or footage of staff or executives of the Client and of companies and firms that have contributed to the cost of the Artwork.

347    He did not, however, accept Ms Wolff’s deletion of logos on the plaque in the credit clause because Ms Hanlan had instructed him that it was important for the logos of MBL and its co-contributors to appear on the plaque. As such, he reinstated the relevant wording in the credit clause.

348    His marked-up version of the credit clause was as follows:

Credit: It is understood that a plaque with the attribution “Fearless Girl by Kristen Visbal” is to be delivered with the Artwork and that the plaque will bear (or the Client may organize for the plaque to bear) the names and logos of the Client and the co-contributors who sponsored of the Artwork, the general style of which plaque may be with approval of approved by the Artist (and which may not unreasonably be withheld or delayed). The Client agrees to install the plaque within 10 feet of the Artwork. The Client further agrees that the plaque will accompany the Artwork should it be relocated at any future date(s).

349    He then forwarded his proposed amendments to Ms Hanlan and Ms Sheehan by email. That evening, he was copied in on an email from Ms Hanlan to the artist attaching a revised version of the draft art agreement and including the following comments:

We have updated the contract by inserting examples of how we would like to use the girl in respect to promotion. If we can agree on this quickly then we can keep everything moving in time for September (date still not confirmed!) – these examples are fairly predictable in terms of how we would want to promote our investment in the girl across our websites, social platforms and PR. I’m expecting 4-6 (max) partners who would all want to promote the girl in this manner. We would also want all of their logos on the plaque. We will be positioning this as a ‘gift’ to the Australian people (women) to champion this issue of wage equality.

350    Let me then turn to the events of 31 July 2018.

351    Early that morning, Mr McDonald was copied in on an email from Ms Hanlan which included emails from the artist and Ms Wolff discussing the possibility of a telephone discussion to finalise the draft art agreement. He briefly reviewed those emails, noting Ms Wolff’s comments that she had negotiated the agreement between the artist and State Street (US) and she had made “slight modifications” to the draft art agreement.

352    At that stage, he did not have a copy of the version of the draft art agreement with Ms Wolff’s amendments, though he assumed from her comment that the amendments she had made were “slight” that there would be no substantive changes to the version that he had provided to Ms Hanlan the previous day.

353    He also assumed from the context of the email thread and his amendments to the credit clause that the references to logos not being able to be used referred only to the use of logos on the plaque.

354    A short time later, Ms Hanlan emailed asking him to try to make the telephone call, and noting as follows:

Logo on plaque is important - happy to adjust wording but our partners will want that - it shows how diverse organisations can come together on this issue etc

Also need it on social but again happy to work around her wording.

355    Shortly after receiving Ms Hanlan’s email, Mr McDonald emailed Ms Wolff stating that he was available for a telephone call, and asking for a copy of the latest version of the draft art agreement, which, as I mentioned, he did not have at the stage. Ms Wolff responded promptly to his email and attached the current version of the draft art agreement. This was his first direct communication with Ms Wolff, although it was clear from the earlier versions of the draft art agreement being exchanged that both Ms Wolff and he had been involved in making the amendments.

356    Ms Wolff had amended the no branding use clause and the credit clause as follows:

“No Branding Use”: The phrase “Fearless Girl” has been registered as a trademark by State Street Global Advisors of Boston, Massachusetts, USA in connection with gender diversity goals and in corporate governance. Client may identify the artwork by its title “Fearless Girl” and the title of the Artwork and an image of the Artwork may appear in any media as a newsworthy placement however, the following restrictions regarding the Artwork will apply to preserve the integrity of the Artwork:

(1)    The Artwork shall never be used, or authorized for use, as a logo or brand or on or in merchandising. The Artwork shall never be displayed on “branded” material, in any medium now know or hereafter devised, including without limitation any merchandise, products, or printed or electronic material, that features a trademark, service mark, trade name, tagline, logo, or other indicia identifying a person or entity except for Kristen Visbal or State Street Global Advisors or its affiliates.

(2)    The Artwork may not be used in connection with gender diversity issues in corporate governance or in the financial services sector.

(3)    The Artwork may not be used by the Client for the promotion of any political party, politician, activist, or activist group.

For clarity, however: nothing in this clause prevents the Client or companies or firms who contribute to the cost of the Artwork (and including any bank, superannuation fund or other financial services entity) from:

a.    talking about the Artwork (including why it was purchased, what it represents to them, who has partnered with the purchase and how their purchase of the Artwork supports gender diversity goals); or

b.    taking the Artwork on a roadshow within Australia and showing and discussing the Artwork in public (and particularly in regional and rural schools and communities); or

c.    referring to or using (and, where relevant, authorizing use of) images and footage of the Artwork in connection with the acquisition of the Artwork:

i.    in their social media (including, without limitation, Face Book, Twitter, Instagram, YouTube and Linked In);

    ii.    on their websites; and

iii.    in their newsletters or other publications (whether or not such also carry their logos or other branding, and including in media releases and other promotion around “Equal Pay” issues, including for Equal Pay Day in Australia and the Equal Pay Potential Project);

or

d.    using images or footage of the Artwork in situ in relation to the above and which include images or footage of staff or executives of the Client and of companies and firms that have contributed to the cost of the Artwork, in connection with the acquisition of the Artwork.

Credit: It is understood that a plaque with the attribution “Fearless Girl by Kristen Visbal” is to be delivered with the Artwork and that the plaque will bear (or the Client may organize for the plaque to bear) the names and logos of the Client and the co-contributors who sponsored of the Artwork, the general style of which plaque and wording may be approved by the Artist (and which may not unreasonably be withheld or delayed). The Client agrees to install the plaque within 10 feet of the Artwork. The Client further agrees that the plaque will accompany the Artwork should it be relocated at any future date(s).

357    He was aware that Ms Wolff had indicated that she was not available later in the day and he did not want to miss speaking with her, so he quickly reviewed the version of the draft art agreement that was attached to her email. His main focus during the review was the no branding use clause and the credit clause. He wanted to see whether Ms Wolff had made any changes to the proposed uses of the replica by MBL and co-contributors, and whether logos could appear on the plaque.

358    He noted that Ms Wolff, among other changes, had struck through the following words:

(a)    “(and including any bank, superannuation fund or other financial services entity)” which he had inserted into the chapeau in the clarifications to the no branding use clause;

(b)    “whether or not such also carry their logos or other branding” which he had inserted into subclause (c)(iii) of the clarifications to the no branding use clause; and

(c)    “and logos” that he had reinstated into the credit clause.

359    Notwithstanding these proposed amendments, Ms Wolff had not excluded any particular type of organisation or company from being a co-contributor, and had not limited the substance of what MBL and co-contributors might do under clarifications to the no branding use clause. Rather, what had been deleted in the no branding use clause were provisions which were, in her words, “not necessary”. Ms Wolff’s editorial note in full was “This is not necessary to include and we prefer not to call this out.”

360    Just before he called Ms Wolff, he received a further email from Ms Hanlan stating that “If logos are an issue then we could just list the names of the organisations in words - but that’s not my preference”. He understood this to be a reference to the logos of MBL and its co-contributors on the plaque.

361    He then called Ms Wolff. This was the first time he had spoken to her. The call lasted around 14 minutes, a large part of which was made up of pleasantries and introductions, including in relation to the nature of their respective practices and that they both seemed to act for similar types of clients. In evidence was Mr McDonald’s very brief hand-written note of the telephone conversation. I accept his version of the conversation.

362    During their discussion Ms Wolff stated that the no branding use clause was required under the artist’s agreement with State Street (US). Mr McDonald stated that his concern was whether MBL and the co-contributors would be able to use the replica as part of the campaign to raise awareness of gender equality issues, and that MBL had no interest in using the replica as a brand.

363    In relation to the credit clause, Ms Wolff stated that the artist’s agreement with State Street (US) would prevent the artist from permitting MBL and the co-contributors to use their logos on the plaque. Mr McDonald stated that MBL would be content not to have logos on the plaque if that was an issue with State Street (US), as long as its name and the names of the co-contributors could be shown.

364    Further, he stated that he wanted the draft art agreement to be clear about what uses MBL and the co-contributors could make of the replica. He also stated that MBL did not at that stage know who all the campaign partners would be.

365    He had the clear impression from the discussion and what seemed to him to be the minor further amendments made by Ms Wolff that she was in agreement with how MBL and the co-contributors wanted to use the replica as part of the campaign, though he cannot recall what words she used. If he had not been satisfied that MBL’s proposed uses were agreed, he would have sought further confirmation.

366    At no point during the discussion did Ms Wolff state or suggest anything to the effect that superannuation funds, banks or financial services organisations could not be co-contributors or otherwise involved with the campaign. Further, she did not state or suggest that the provisions in the clarifications to the no branding use clause would place the artist in breach of any obligations she may have to State Street (US) or were not otherwise acceptable to the artist. Further, she did not state or suggest that the artist had received any complaint from State Street (US) in relation to the sale of any replicas of the New York statue. Further, she did not state or suggest that dealing with images of the replica in line with what was permitted under the exhibition, publishing and promotion clause or clarifications to the no branding use clause would present a contractual, copyright or other legal problem for MBL or any co-contributor.

367    I should set out in full the exhibition, publishing and promotion clause as it appeared in the draft art agreement:

Exhibition, Publishing and Promotion: Client may exhibit and display the Artwork but may not make any commercial reproductions of the Artwork, either 2D or 3D without Artist’s express written consent. Subject to the terms of this Agreement, and in addition to any available exceptions under copyright law, Client (and co-contributors to the Cost) may reproduce and authorize the 2-d reproduction of the Artwork to promote or publicise its (and their) acquisition of the Artwork and may include the name of “Kristen Visbal” as Artist, title of the Artwork as “Fearless Girl” and its (and their) name(s) as purchasers of the Artwork. Such promotion and publicity may include print material, website, press and media coverage and social media.

368    Had Ms Wolff told him that financial services organisations could not be involved in the MBL campaign, he would have advised Ms Hanlan and Ms Sheehan accordingly, just as he advised them that MBL would not be allowed to put its logo or the logos of the co-contributors on the plaque.

369    Shortly after their discussion ended, Ms Wolff forwarded a further version of the draft art agreement to Mr McDonald. The further version purportedly corrected a typographical error in the version circulated earlier that morning, but he could not at the time identify what error had been corrected.

370    Shortly thereafter, he telephoned Ms Hanlan on her mobile, first having again reviewed Ms Wolff’s latest amendments to the draft art agreement, including her various comments. The substance of his telephone conference with Ms Hanlan was set out in the email he sent to her and Ms Sheehan shortly after his telephone conference with Ms Hanlan ended. In that email he confirmed that he thought the amendments proposed were appropriate, and attached the latest version of the draft art agreement from Ms Wolff.

371    Both versions of the draft art agreement that Ms Wolff sent to him on the morning of 31 July 2018 included the following comment next to her deletion of part of his amendments to the clarifications to no branding use clause: “This is not necessary to include and we prefer not to call this out”. He had briefly noted the words “not necessary to include” at the time he was reviewing Ms Wolff’s changes prior to their telephone discussion. It was only when he went back to review the draft art agreement after that discussion, and without the same time pressure, that he saw the whole of the comment.

372    He did not linger on what Ms Wolff might have meant by the second part of her comment. She did not mention or refer to that comment during their discussion and he had no reason to otherwise conclude from their call that Ms Wolff had accepted that superannuation funds and possibly other financial institutions would, and could, contribute to the purchase.

373    He never discussed Ms Wolff’s comment with MBL and neither Ms Hanlan, Ms Sheehan or anyone else at MBL, ever raised what Ms Wolff might have meant by this comment with him.

374    On 2 August 2018, Mr McDonald received an email from Ms Wolff asking if he would be sending back a clean version of the draft art agreement for signing. He responded shortly afterwards saying that he was getting instructions. On 3 August 2018, Ms Wolff wrote again saying – “Just checking in!”. He responded on 4 August 2018 to say that he did not have instructions and would “chase the client”.

375    On 6 August 2018, he received an email from Ms Hanlan stating that MBL wanted to delay the acquisition of the replica because Ms Hanlan had not yet got enough campaign partners on board. She asked him to draft some wording for her to send to the artist, offering a 20% deposit to show good faith that the acquisition would still go ahead. He provided some suggested wording to Ms Hanlan and Ms Sheehan that day.

376    On 8 August 2018, he received an email from Ms Hanlan that forwarded part of an email from the artist, agreeing to the proposal for the delay and a 20% deposit and proposing that the draft art agreement be further amended to reflect this. He responded to Ms Hanlan, suggesting a side agreement be drawn up to deal with the new issue.

377    Except for administrative client matters such as invoicing, he had no further involvement in the matter until late January 2019.

378    On 25 January 2019, whilst he was on annual leave in Japan, Ms Hanlan emailed him with an update on the status of the project and asked him to review a revised version of the draft art agreement which the artist had sent to her. He could see from the email chain that the artist had sent the revised draft art agreement with some changes highlighted.

379    On 26 January 2019, he sent to Ms Hanlan a revised version of the campaign partner guidelines. Given that the two campaign partners Ms Hanlan had secured were superannuation funds, he highlighted in yellow the reference in the guidelines to the financial services sector.

380    On 1 February 2019, Ms Hanlan emailed him in regards to the revised campaign partner guidelines. She wrote:

… I’m trying to cast my mind back to our original discussions and I can’t remember exactly what this clause meant:

    use images of the work in corporate governance activities or in the financial services sector; or

Since none of the partners are fin services that bit is clear but what do I advise the partners around the meaning of “work in corp governance”?

381    On 4 February 2019, he responded by email stating:

Apologies for the delayed response, but the issue there was purely that the work was initially created for a firm operating in that field and that Kristen had agreed not to licence use in relation to that sector.

382    By this he meant that, as the commissioner of the New York statue, State Street (US) had a trade mark and operated in the area of financial services, the artist was not entitled to license the work for business activities in that sector.

383    In reading his response again, he realised that he focused his attention on the wording “or in the financial services sector” because it was highlighted in Ms Hanlan’s email and he thought she was directing his attention to those words. He did not, either at the time or subsequently, until preparing his written evidence in the present proceeding, notice Ms Hanlan’s words “Since none of the partners are fin services”. He therefore did not address what appeared to have been a misunderstanding on Ms Hanlan’s part as to the nature of the two superannuation funds involved, that is, that each fund was an organisation in the financial services sector.

384    Later that afternoon, he received a further email from Ms Hanlan asking for the current version of the draft art agreement to be further amended by including a “small note” to the effect that MB would be “the first FG in the Australia Mkt”.

385    Shortly thereafter, he had a short telephone discussion with Ms Hanlan. He said that MBL and the co-contributors could not use images of the replica or the words Fearless Girl as part of their service offerings unconnected with the campaign. He said that MBL and the co-contributors could use the name Fearless Girl and images of the replica in the campaign and in the context of the public debate that the campaign intended to generate. He said that the clarifications to the no branding use clause gave MBL and the co-contributors comfort that the artist expressly authorised them to do what they planned to do. And he said that rather than him drafting the “small note” concerning MBL being the first to launch a replica of the New York statue in Australia, she should first discuss the matter with the artist.

386    On that call with Ms Hanlan, he did not say, and she did not ask, whether he considered that superannuation funds were companies within the financial services sector. Had he believed then that Ms Hanlan was mistaken as to her characterisation of those companies not being in the financial services sector, he would have corrected her, but his advice as set out above would not have been any different.

387    On 6 February 2019, Mr McDonald had a telephone discussion with Ms Hanlan in which Ms Hanlan asked him for, and he dictated to her, the wording for a clause to be inserted into the draft art agreement to address Ms Hanlan’s concern about the artist making further sales of replicas of the New York statue into Australia before MBL’s launch on 26 February 2019.

388    He had no further involvement in drafting or negotiating the art agreement with the artist.

389    As I have said, the art agreement was entered into on 6 February 2019.

390    In its final form it contained the following provisions.

391    The exhibition, publishing and promotion clause provided:

Exhibition, Publishing and Promotion: It is understood that the Artwork will be displayed in a public place. Should the sculpture be removed from it’s original installation site, the work will be relocated to another public site to be enjoyed the people and where it can continue to send the messages it represents. Client may exhibit and display the Artwork but may not make any commercial reproductions of the Artwork, either 2D or 3D without Artist’s express written consent. Subject to the terms of this Agreement, and in addition to any available exceptions under copyright law, Client (and co-contributors to the Cost) may reproduce and authorize the 2-d reproduction of the Artwork to promote or publicise its (and their) acquisition of the Artwork and may include the name of “Kristen Visbal” as Artist, title of the Artwork as “Fearless Girl” and its (and their) name(s) as purchasers of the Artwork. Such promotion and publicity may include print material, website, press and media coverage and social media.

392    The “no branding use” clause provided:

“No Branding Use”: The phrase “Fearless Girl” has been registered as a trademark by State Street Global Advisors of Boston, Massachusetts, USA in connection with gender diversity goals and in corporate governance. Client may identify the artwork by its title “Fearless Girl” and the title of the Artwork and an image of the Artwork may appear in any media as a newsworthy placement however, the following restrictions regarding the Artwork will apply to preserve the integrity of the Artwork:

(1)    The Artwork shall never be used, or authorized for use, as a logo or brand or on or in merchandising. The Artwork shall never be displayed on “branded” material, in any medium now known or hereafter devised, including without limitation any merchandise, products, or printed or electronic material, that features a trademark, service mark, trade name, tagline, logo, or other indicia identifying a person or entity except for Kristen Visbal or State Street Global Advisors or its affiliates.

(2)    The Artwork may not be used in connection with gender diversity issues in corporate governance or in the financial services sector.

(3)    The Artwork may not be used by the Client for the promotion of any political party, politician, activist, or activist group.

For clarity, however: nothing in this clause prevents the Client or companies or firms who contribute to the cost of the Artwork from:

a.    talking about the Artwork (including why it was purchased, what it represents to them, who has partnered with the purchase and how their purchase of the Artwork supports gender diversity goals); or

b.    taking the Artwork on a roadshow within Australia and showing and discussing the Artwork in public (and particularly in regional and rural schools and communities); or

c.    referring to or using (and, where relevant, authorizing use of) images and footage of the Artwork in connection with the acquisition of the Artwork:

i.    in their social media (including, without limitation, Face Book, Twitter, Instagram, YouTube and Linked In);

    ii.    on their websites; and

iii.    in their newsletters or other publications (, and including in media releases and other promotion around “Equal Pay” issues, including for Equal Pay Day in Australia and the Equal Pay Potential Project);

or

d.    using images or footage of the Artwork in situ in relation to the above and which include images or footage of staff or executives of the Client and of companies and firms that have contributed to the cost of the Artwork, in connection with the acquisition of the Artwork.

e.    The Artist agrees not to authorize any additional sales of a full size Fearless Girl for the Australian market between the date of this agreement and 26 February 2019.

393    The copyright clause provided:

Copyright: The Artist and Visbal Fine Bronze Sculpture, Inc. retain the right to the copyright in the Artwork. The Artist reserves the right to reproduce the work in variation and at a different size but undertakes not to produce more than 25 (plus 2 Artists’ Proofs) at or substantially at the size of the A1twork. Artist reserves the right to exhibit and use photographs of the Artwork for the purpose of promotional pieces, articles, or advertising for the Artist’s work.

394    The credit clause provided:

Credit: It is understood that a plaque with the attribution “Fearless Girl by Kristen Visbal” is to be delivered with the Artwork and that the plaque will bear (or the Client may organize for the plaque to bear) the names of the Client and the co-contributors who sponsored of the Artwork, the general style of which plaque and wording may be approved by the Artist (and which may not unreasonably be withheld or delayed). The Client agrees to install the plaque within 10 feet of the Artwork. The Client further agrees that the plaque will accompany the Artwork should it be relocated at any future date(s).

395    The attendance at event clause provided:

Attendance at event: The Artist will, at her own cost, attend and speak at an event in Melbourne, Australia organised by the Client in relation to the Artwork during February 2019 (the Event). The Artist will, at Client's request, be available 3 days to speak at various events. Client shall provide Artist with a minimum of two (2) weeks notice of the timing and placement of the Artwork, and shall provide Artist with information concerning the ceremonial plans. The ceremony shall mention that the first casting of the Artwork was placed in Wall Street by State Street Global Advisors of Boston, Massachusetts USA.

396    Now at no point during the negotiations in which Mr McDonald was involved either in 2018 or in 2019 did he have any apprehension or concern, or was he told, that the art agreement would risk putting the artist in breach of her agreement with State Street (US).

397    He was never instructed by MBL to, nor did he, apply any pressure on the artist or Ms Wolff, or make any ultimatum or demand, to accede to any of MBL’s proposed amendments to the art agreement. If the artist or Ms Wolff had given him any reason to believe that the artist could not enter into the art agreement in that form, or that by doing so the artist may have been in breach of her agreement with State Street (US), he would have advised MBL either not to enter the art agreement at all or to continue negotiating to reach mutual agreement on the terms in a manner which would not impact on the artist’s agreement with State Street (US). Neither the artist nor Ms Wolff gave him any impression from what they said to him or wrote in the form of emails or proposed amendments to the draft art agreement that the artist might breach her agreement with State Street (US).

398    In his negotiations with Ms Wolff he relied on her apparent experience and expertise in this area of law, to ensure that the artist was entitled to grant the rights she purported to grant, and to not put her client at risk of breaching any contractual agreements or the law.

399    He was first provided with a heavily redacted form of the master agreement on 13 February 2019 by Ms Wolff. Mr McDonald requested that Ms Wolff provide him with a copy of the master agreement after a conversation that he had with the Deputy General Counsel of SSGA, Mr Sean O’Malley, on 8 February 2019. During that conversation, Mr O’Malley informed Mr McDonald of the master agreement and State Street (US)’s “right of display” of Fearless Girl and said that MBL’s planned installation and use of the replica infringed SSGA’s trade mark rights.

400    On 14 February 2019, he received an unredacted version of the master agreement from the solicitors for SSGA after he signed a confidentiality undertaking.

401    Prior to these occasions, he had never seen the master agreement, nor had Ms Wolff or the artist disclosed any of its terms to him, other than by way of the comments set out above or in a letter from Ms Wolff dated 12 February 2019 which he received on 13 February 2019, given the time zone differences between the US and Australia, approximately 75 minutes before receiving the redacted master agreement. I will discuss some further detail of this letter later in my reasons.

402    Let me now deal with another matter.

403    At the time Mr McDonald prepared his first affidavit in these proceedings, Ms Clare Young, the solicitor at Simpsons with day to day carriage of this matter, provided him with a copy of the artist’s 21 December 2018 email to Ms Hanlan.

404    Ms Young asked him if he had received a copy of that email from Ms Hanlan or if Ms Hanlan had discussed that email with him. He did not receive that email from Ms Hanlan, nor did Ms Hanlan ever tell him about that email.

405    Ms Young also provided him with a copy of the 3 to 10 January 2019 emails. Ms Hanlan did not send that email chain, or any of the emails in it, to him, nor did she tell him about the contents of any of those emails.

406    Now State Street (US) sought to finesse a lot out of very little concerning the non-provision of these emails to Mr McDonald at the relevant time. But there is nothing in its points which I will discuss in more detail in the next section.

INTERFERENCE WITH CONTRACTUAL RELATIONS

407    There are two time frames that are relevant to the claims concerning the tort of inducing breach of contract or more generally interference with contractual relations.

408    State Street (US) says that MBL in the period up to 6 February 2019, induced or procured the artist to enter into the art agreement in circumstances where MBL was wilfully blind or recklessly indifferent to the fact that this would place the artist in breach of the master agreement.

409    Further, State Street (US) says that MBL in the period up to 26 February 2019, induced or procured the artist to attend and participate in the launch event in such a fashion as to breach the master agreement in circumstances where MBL had full knowledge of the relevant terms of the master agreement from at least 13 February 2019, including the various limitations on the activities of the artist and the rights and benefits granted to State Street (US) under the master agreement.

410    In summary, I would reject these claims. MBL did not have the relevant state of mind to make out this tort whether one for attribution purposes takes the guiding mind of Ms Hanlan or aggregates the minds of Ms Hanlan and Mr McDonald; for relevant purposes I am prepared to proceed on the basis that Ms Sheehan was not the guiding mind or that if she was, her knowledge and intention were co-extensive with that of Ms Hanlan and Mr McDonald. Moreover, part of the underlying foundation has not been made out in the sense that State Street (US) has not established that the artist breached the terms of the master agreement by entering into the art agreement or participating in the launch event.

411    It is convenient to begin by referring to Donaldson v Natural Springs Australia Limited [2015] FCA 498 at [202] to [220] where I made the following points.

412    There are various dimensions to the economic tort of interference with contractual relations. So, it is appropriate to be clear on the categories.

413    The relevant interference must be deliberate. But it can be direct or indirect. Where the interference is direct, the relevant act of persuasion, inducement or procurement is treated as being unlawful in and of itself. But where the interference is indirect, an independent unlawful act is required.

414    The paradigm case of interference concerns direct interference which amounts to procuring or inducing a breach of contract (Lumley v Gye (1853) 2 El & Bl 216; 118 ER 749).

415    The various elements of the classic Lumley v Gye tort are not in doubt. First, there must be a contract. Second, the respondent must know that such a contract exists. Third, the respondent must know that if one of the contracting parties does or fails to do a particular act, that conduct would be a breach of the contract. Fourth, the respondent must intend to and in fact induce or procure that contracting party to breach the contract by doing or failing to do that particular act. Fifth, the breach must cause loss or damage to the applicant. Sixth, no defence of honest and reasonable belief should be applicable.

416    Now it is not in doubt that the gravamen of the tort is intention to induce or procure breach, with knowledge that such a breach will interfere with contractual rights (Allstate Life Insurance Co v Australia and New Zealand Banking Group Ltd (1995) 58 FCR 26 at 43 per Lindgren J). And wilful blindness or reckless indifference can constitute knowledge for this purpose. Further, knowledge of the contract may provide a sufficient basis for inferring the necessary intent. In other words, a person’s knowledge that he is by his conduct inducing a breach of contract may be sufficient to establish the required intention (see Allstate Life Insurance at 37). Questions of knowledge and intention are interrelated. However, a bona fide belief reasonably entertained that so to act would not result in a breach of contract might negate the requisite intent (see Short v City Bank of Sydney (1912) 15 CLR 148 at 160 per Isaacs J).

417    Now as I have said, from knowledge one may be able to infer intention. But it is intention that must be shown. So, for example, merely to show that the tortfeasor could or did foresee the consequence of tortious conduct is not sufficient.

418    Further, let me say something more on the question of knowledge of the contract, if it be said that that is the foundation from which intention can be established by inference. In some cases, where the contract is of a standard type or a standard class of contract, it may not be necessary for the tortfeasor to have precise knowledge of its terms for intention to be inferred. But where one is not dealing with such standard scenarios, in order for the claimant to establish intention by inference from knowledge, it may be necessary to establish knowledge of more precise aspects or terms of the contract. This will all depend on the nature of the case being advanced and the type of breach being asserted. So, in the present case, being a case dealing with a non-standard or bespoke contract scenario, for State Street (US) to establish the tort, it needed to show more knowledge on the part of MBL than just the fact of the existence of the master agreement; it needed to show that MBL had knowledge of the relevant terms of that agreement.

419    Further, for the tort of inducing breach of contract, a distinction should be made between “procuring” or “inducing” on the one hand, and “advising” on the other hand. The former may be actionable. The latter is not. To induce a breach is to create a reason for breaking it. To advise a breach is to point out that a reason already exists.

420    So, even if the requisite knowledge is established, the inducing or procuring conduct of MBL must itself be proved. In Allstate Life Insurance, Lindgren J cited with approval what was said by Street J in Short v City Bank of Sydney (1912) 12 SR (NSW) 186 at 202 to 203 that:

The words “induce” and “procure” in their ordinary significance, I think, convey the idea of persuasion or contrivance, and I think that a person complaining of a breach of contractual relations brought about by these means must show that the person whose actions are complained of did something in the nature of effectually persuading or prevailing upon the other party to the contract to violate his obligations under it. The persuasion may take the form of advice or friendly solicitation, or it may take the form of intimidation or molestation, but in every case I think that it must be shown that the defendant deliberately intervened between the contracting parties, either with the express design of depriving the plaintiff of the benefit of his contract, or under such circumstances that he must have known that the effect of his intervention would be to deprive the plaintiff of that benefit.

421    Merely facilitating a breach, or entering into a transaction that is inconsistent with the contracting party’s obligations, is insufficient. It must be established that the relevant impugned conduct operated on the will of the contracting party. If the contracting party has already decided to commit a breach, no liability attaches to the mere acceptance of the benefit of that breach.

422    The element of inducement or procurement represents a high bar. It is not enough for the alleged wrongdoer to know that a breach may well happen or is the natural and probable consequence of the alleged wrongdoer’s activities; he must take some step which manifests an intention to induce the breach. What must be shown is some persuasion, encouragement, assistance or pressure that is aimed at the contract such that there is a clear causal link between the respondent’s conduct and the breach.

423    Before discussing indirect interference, I should note that direct interference can extend to conduct that prevents or hinders a party’s contractual performance or encourages the same even though this may not amount to procuring or inducing a breach of contract as such. But that is not my case. As I have said, State Street (US) alleges that MBL in two time frames procured or induced the artist to breach the master agreement.

424    Now in addition to direct interference, the tort may also be established by an indirect interference with contractual relations. But if indirect interference is relied upon, then unlawful conduct or means must be established as part of the interference. To appreciate why this is necessary, it is important to be clear about what is meant by indirect as compared with direct interference. Direct interference occurs where the respondent’s act or omission, whether as intervener or persuader, acts on the mind or position of one of the parties to the contract. Indirect interference occurs where the respondent’s act or omission acts on the mind or position of a third party (for example an employee or officer of a contracting party) which causes that third party to take or not take a step which then acts on the mind or position of one of the contracting parties. So expressed, one can appreciate why unlawful means are imposed as a requirement for indirect interference. The direct interference is prima facie unlawful because it directly touches one of the contracting parties and their contractual rights. But the same cannot be said where the respondent’s conduct acts first on a third party who is not a contracting party. Some other element of unlawfulness needs to be added beyond the ultimate intention of the respondent in seeking to interfere with the contract. The question is whether the action of the respondent on the third party involves an unlawful or wrongful act. Has the respondent persuaded or caused the third party to do an unlawful or wrongful act?

425    Whether the tort can be established by indirect interference is not beyond controversy. The High Court has not dealt with this directly. In Zhu v Treasurer of the State of New South Wales (2004) 218 CLR 530 the Court expressed the tort in broader terms than inducing a breach of contract. First, it referred to the tort in terms of an interference with contractual relations, connoting that something short of causing a breach may be sufficient to establish the tort. Second, in the proceedings at first instance, a claim for indirect interference was made. The High Court referred to this indirect interference claim (at [38]) without exception; it was not said that indirect interference could not in appropriate circumstances constitute the tort. Although Zhu principally turned upon the defence of justification, it provides implicit support for a tort of interference with contractual relations, embracing both direct and indirect interference.

426    Lord Hoffmann in OBG Ltd v Allan [2008] 1 AC 1 distinguished the different genesis of the tort of inducing breach of contract as compared with the English tort of causing loss by unlawful means. Further conceptual divisions were made categorising the former tort as one of accessorial liability and the latter tort as one of primary liability. He rejected a unified tort theory embracing both torts, but he did accept a Venn diagram type description. Now in 1995 the High Court rejected a more general economic tort of causing loss by unlawful means. And it has also been lukewarm about a slightly narrower economic tort in theory of interference with trade or business interests by unlawful means. I do not need to trouble myself further at that conceptual level.

427    But there is one aspect of Lord Hoffmann’s discussion concerning direct and indirect interference with contractual relations that is worth mentioning. His Lordship expressed doubt as to the tort of indirect interference with contractual relations. Rather, he preferred to put such conduct into the broader category of the tort of causing loss by unlawful means.

428    Lord Hoffmann said (at [38]):

In my opinion, therefore, the distinction between direct and indirect interference is unsatisfactory and it is time for the unnatural union between the Lumley v Gye tort and the tort of causing loss by unlawful means to be dissolved. They should be restored to the independence which they enjoyed at the time of Allen v Flood. I shall therefore proceed to discuss separately the essential elements of each.

429    His Lordship addressed what he considered to be an unsatisfactory distinction by making two related moves. First, he took indirect interference and put it into the broader category of the tort of causing loss by unlawful means. That move is not available to me. Second, by doing so, he confined Lumley v Gye to its plain vanilla application. But again, I do not consider that the tort of interference with contractual relations is so restricted.

430    His Lordship suggested that Lumley v Gye created accessorial liability, dependent upon the primary wrongful act of the contracting party, whereas indirect interference, which required unlawful means, was a tort of primary liability. So he considered that blending indirect and direct interference into the one tort was inappropriately blending primary and accessorial liability. Now whether that is so does not affect the approach I am required to take. But this primary and accessorial liability distinction may not be all that clear or clean. Accepting that indirect interference involves a tort of primary liability, so too may be the case with direct interference. Direct interference may involve, in some cases, not inducing a breach as such. It may involve preventing or hindering a contracting party’s performance which does not involve or produce a breach. In such a case, such conduct of the respondent would not amount to accessorial liability, for there would be no “primary wrongful act of the contracting party” [my emphasis]. In such a situation of direct interference the respondent would have primary liability.

431    In my view, the tort of indirect interference with contractual relations is available under Australian law. But both the relevant intention as well as the separate unlawful conduct or means must be established as being involved in the interference. Now there is an issue as to what “unlawful” entails or embraces. But much depends on the context of the particular economic tort being discussed. To describe it as the infringement of some right may be useful, but not sufficient. I do not need to elaborate further as this is not the case advanced by State Street (US).

432    Let me now turn to one of the foundational questions before turning to the tort directly.

(a)    Breaches of the master agreement by the artist

433    It is necessary to be clear on what breaches of the master agreement by the artist are being relied upon by State Street (US). There are two broad categories to consider.

434    The first category involves the assertion that the entry into of the art agreement by the artist breached her obligations under the master agreement. I would say now that no such breach has been established.

435    The second category involves the assertion that by conduct of the artist principally after the art agreement was entered into, in assisting MBL, HESTA and Cbus to carry out the MBL campaign the artist breached her obligations under the master agreement. Now as to the second category, I am not, for the most part, satisfied that those breaches have been established. But even if they were, as against MBL the tort has not been established.

436    Let me go through the various breaches of the master agreement asserted by State Street (US) in roughly the order of the various provisions of the master agreement. I will state my reasons in summary form based upon the considerable factual detail set out in other parts of my reasons that I will not repeat here.

437    First, it is said that the artist failed to provide the required attribution to State Street (US) on the replica which was used at the launch event in breach of cl 1(d) of the master agreement. Clause 1(d) required that any three-dimensional or two-dimensional reproductions of the artwork provided by the artist to a third party as part of a promotional or corporate event include an attribution in terms “Statue commissioned by SSGA”. But no such attribution was included in the plaque created by the artist for MBL to install at the launch event.

438    I am not convinced that there was any breach by the artist. Indeed, at the launch event the artist gave verbal attribution to State Street (US). But if there was, this was without the intention or knowledge of MBL. And in any event no plaque was used or installed next to the replica.

439    Second, it is said that the artist used the replica to promote third parties while discussing gender diversity issues in breach of cl 3(a) of the master agreement. At the launch event, the artist gave a speech during which she commended MBL, HESTA and Cbus for “demonstrating their dedication to diversity and equal pay through their gift of Fearless Girl to the people of Australia”. It is said that this conduct is also in breach of cl 3(a). But even if I accepted that submission of State Street (US), for reasons that I will explain later it goes nowhere.

440    Third, it is said that the artist failed to use reasonable efforts to ensure that the artwork was not exploited in a manner that could tarnish or dilute State Street (US)’s brand in breach of cl 6(a) of the master agreement. Indeed, cl 7(a) also acknowledged that the use and exploitation of the artwork by financial institutions may dilute, tarnish or damage State Street (US) and State Street (US)’s brand. Now HESTA and Cbus were partners in the MBL campaign. And it is said that those companies used and exploited the artwork. It is said that the artist made no efforts to ensure that the artwork was not used and exploited by those financial institutions, and as such she was in breach of cl 6(a).

441    But I reject these assertions of State Street (US). I do not consider on the evidence that there was any tarnishing or dilution of “the SSGA brand” or “SSGA’s high quality reputation” as referred to in cl 6(a). The suggestion is fanciful.

442    Fourth, it is said that the artist did not request approval from State Street (US) to sell, license or distribute the replica to MBL, HESTA or Cbus in breach of cl 6(f) of the master agreement. It is said that the sale and distribution of the replica was not one of the pre-approved uses stipulated in the pre-approved uses clause (cl 6(c)). As such, it is said that it required review and discussion between State Street (US) and the artist. And in this context State Street (US) had no knowledge of the sale of the replica until 6 February 2019 when State Street (US) representatives became aware of the MBL campaign via media articles.

443    I reject this assertion of State Street (US), in light of the breadth of cl 6(c). What was done was a “Pre-Approved Use”. No approval was required.

444    Fifth, it is said that the artist authorised MBL, HESTA and Cbus to use the artwork as a logo or brand in breach of cl 7(b) of the master agreement.

445    Now whilst the “no branding use” clause as required by cl 7(b) and exhibit C (the “No Branding Provision”) was incorporated into the art agreement, it is said that the artist allowed the use of the artwork in a manner in breach of cl 7(b). It is said that MBL, HESTA and Cbus all used the artwork as a logo and brand by using it together with their trade marks, trade names, logos and other identifying indicia, including on the invitations to the launch event, on the billboard at the launch event, on the wrap-around cover and Stellar advertisement. Further, it is said that there were various instances of social media posts by MBL, HESTA and Cbus that involved use of the artwork together with those companies’ logos and other identifying indicia.

446    But in my view State Street (US) has not established that the artist was in breach of her obligations as such. And I would say this even if it was established that MBL, HESTA and Cbus so used the replica, which I do not accept in any event. I will discuss later the question of MBL’s, HESTA’s and Cbus’ use of logos and brands in the context of the ACL claims and also the trade mark infringement claims.

447    Sixth, it is said that the artist sold, licensed or distributed the replica to HESTA and Cbus, which are financial institutions, for a commercial and/or corporate purpose, in breach of cl 7(c)(i) of the master agreement. It is said that having regard to HESTA and Cbus’ involvement in the MBL campaign, it is apparent that the replica was sold or distributed to financial institutions. And it is apparent that it was used for a commercial purpose. It is said that the draft sponsorship agreements between MBL and HESTA and Cbus demonstrate that the replica was distributed to HESTA and Cbus and that they were entitled to “use the creative content of the campaign to build awareness of the gender pay gap”. It is said that the language used by the artist in the artist’s 21 December 2018 email and the 3 to 10 January 2019 emails indicating that there was a limitation on the “sponsors” or “partners” who could be associated with the replica was consistent with and does not affect or circumvent the substance of the restriction under cl 7(c)(i) which prohibits the distribution of copies of the artwork to financial institutions for any commercial and/or corporate purpose.

448    I reject these submissions of State Street (US). They are a gloss on the clause. And they are also a gloss on the facts which I have discussed elsewhere.

449    Seventh, it is said that the artist sold, licensed or distributed the replica to MBL, HESTA and Cbus, for use in connection with gender diversity issues in corporate governance and/or in the financial services sector, in breach of cl 7(c)(ii) of the master agreement. And it is said that the replica was used by MBL, HESTA and Cbus for these purposes.

450    As to whether the replica was used in connection with gender diversity issues in corporate governance, it is said that in press releases issued by MBL, HESTA and Cbus, Mr Varghese was quoted as saying “Fearless Girl will be a reminder to Australian workplaces that we must keep up the fight for gender equality – delivering equality changes our workplaces for the better and we must act on this now for future generations of women, including by tackling entrenched pay gaps, increasing the number of women in leadership positions and providing flexible work environments”.

451    Further, it is said that in the lead up to the launch event the plans included discussion of women in leadership roles on boards and it was a focus of questions from media. And it is said that at the launch event itself this was borne out. The artist spoke about the importance of appointing women to corporate boards while HESTA’s CEO Ms Debby Blakey discussed HESTA’s “…great diversity, gender diversity, at board, at senior management and in our exec team for a very long time”.

452    Further, it is said that Cbus’ CEO Mr David Atkin also made comments on the same issue, namely “I am delighted to say that as a result of clear programs of activity we are sitting at 40% for our investment team. I am even more delighted to say that my executive team, if there is such a number, is 66% of my executive team are women” and “as investors we have got a responsible role to play in communicating our expectations to the companies that we invest in. And so we have collaborated closely with HESTA and through ASFA, our peak organisation, in this effort as well as through the 30% Club to get this message through…. And I think we are starting to break through the inertia in this space”. Mr Atkin’s reference to the 30% Club is a reference to the global campaign established in the UK in 2010. The mission of the campaign was to reach at least 30% representation of all women on all boards and senior executive teams globally.

453    Further, it is said that MBL’s representatives, Ms Sanger and Ms Pantelidis made statements on the same issue of gender representation in senior leadership. And the artist spoke at the launch event and referred to the importance of appointing women to corporate boards.

454    Again, these submissions gloss over the detail and I have broken them down elsewhere.

455    But I should note some conceptual confusion in State Street (US)’s case at this point. What is being analysed here is whether there was a breach of cl 7(c)(ii) of the master agreement. Certainly that could not be said in relation to the entry into of the art agreement with MBL. And as to what was said or done at the launch event by HESTA, Cbus or indeed MBL, this did not and could not place the artist in breach of the master agreement. She was not responsible for what they said or did. Further, as to her own conduct at the launch event, I do not consider that she breached the master agreement. But even if she did, MBL had no intention that she would do so or sought to procure or encourage her to do so.

456    As to whether the replica was used in connection with the financial services sector, it is said that HESTA and Cbus are organisations operating within the financial services sector and their involvement in the MBL campaign was predicated on it being of value to its members including via strengthening their brands in the sector.

457    Further, it is said that there was media coverage of the MBL campaign in the financial press, which led with HESTA’s and Cbus’ involvement in the campaign (“Cbus and HESTA, together with Maurice Blackburn, will bring the Fearless Girl statue to Australia in bid to stand for equality and diversity”) and media enquiries about the campaign in connection with the financial services sector (“Superannuation has significant representation of women in CEO/top leadership positions. Why do you think that is?”).

458    Further, it is said that at the launch event there were specific questions planned relating to the financial services sector, such as responsible investment. A question for Cbus was identified as “How Cbus’ involvement in Fearless Girl aligns with its responsible investment profile?”. At the launch event HESTA’s CEO, Ms Blakey, made comments about HESTA’s investment decisions in companies. Ms Blakey said that HESTA had “…an amazing opportunity to engage with the organisations we invest in. And last year we actually wrote to the ASX200 companies and asked them to set targets themselves for senior leadership, targets for women in their senior leadership roles, and to set timeframes for those, and to monitor and report…”. The artist spoke at the launch event and referred to numerous studies relating to gender diversity in the financial services sector.

459    But as I say, none of this establishes any breach by the artist of the master agreement or MBL’s commission of the relevant tort.

460    Eighth, State Street (US) said that the artist had breached cl 7(c)(iii) of the master agreement by selling the replica to MBL, which it said came within the phrase “political party, politician, activist, or activist group”. Now MBL may be called a lot of things and be identified with a lot of causes, but I would not classify it within that taxonomic grouping.

461    Ninth, State Street (US) said that if the artist licensed MBL to make two-dimensional copies of the artwork in connection with gender diversity issues in corporate governance and in the financial services sector, then the artist was in breach of cl 1(a) and (b) of the copyright licence agreement and cl 3 of the master agreement; I have set out relevant provisions of the copyright licence agreement later in these reasons.

462    Now in my view this premise has not been established. Therefore the conclusion fails.

463    Tenth, State Street (US) said that the artist sold and distributed the replica to MBL, HESTA and Cbus and failed to maintain the reputation, goodwill and standards of State Street (US), in breach of cl 3(a) of the trademark licence agreement; I have set out relevant provisions of the trademark licence agreement later in these reasons. Further, it is said that if the artist had licensed MBL to use the Fearless Girl trade mark, the artist failed to ensure that the use of the Fearless Girl trade mark by MBL, HESTA and Cbus did not tarnish, dilute, weaken or blur the Fearless Girl trade mark and/or State Street (US), in breach of cl 3(d) of the trademark licence agreement. It is said that the MBL campaign caused dilution to State Street (US)’s brand and damage to State Street (US)’s reputation. Further, it is said that the artist failed to cooperate with State Street (US) or notify State Street (US) concerning the acts of infringement by MBL, HESTA and Cbus in breach of cl 5 of the trademark licence agreement.

464    Again, the premises for these assertions have not been made out. There was no diminishment of the reputation, goodwill or standards of SSGA. There was no use as a licence of the “Trademark” as such, let alone conduct in breach of cl 3(d). Therefore the various conclusions fail.

465    In my view, State Street (US) has failed to establish many of the asserted breaches by the artist of the master agreement.

466    Further, to the extent that State Street (US) asserts conduct by the artist short of breaches of the master agreement, but such that it is said that MBL otherwise interfered with the artist’s performance of her contractual obligations thereunder, in any event in my view such broader interference has not been made out. Moreover, any such assertions travel beyond the pleaded case.

467    Now so far I have dealt with the various asserted breaches of the master agreement by the artist contended for by State Street (US). Let me now turn more directly to the conduct of MBL and questions of knowledge and intention referable to it. After all, intention is the gist of the tort. I would say now that State Street (US) has not got close to establishing such intention.

(b)    Inducing or procuring the artist’s entry into of the art agreement

468    State Street (US) has said that MBL induced the artist to breach the master agreement in the period prior to 6 February 2019 by inducing or procuring the artist to enter into the art agreement in circumstances where MBL was wilfully blind or recklessly indifferent to the substantial prospect of a breach of the master agreement.

469    Now that is not the correct test. The gravamen of the tort is intention, as I have said. But in any event such assertions fail on the facts.

470    Now I agree with State Street (US) that for the purposes of the tort under discussion, it is necessary to assess the respective states of mind of Ms Hanlan, Mr McDonald and Ms Sheehan, having regard to the state of their knowledge in the relevant circumstances, throughout the period between June 2018 and February 2019.

471    Let me say something about Ms Sheehan. It is not in doubt that Ms Sheehan as MBL’s General Counsel was generally responsible for management of legal risk for MBL. But State Street (US) had to accept that her involvement in the negotiation of the terms of the art agreement was limited. Ms Sheehan relied heavily on the advice she received from Mr McDonald, to whom she deferred as a subject matter expert.

472    Further, Ms Sheehan was only involved in the negotiation of the art agreement until about August 2018, at which time Ms Sheehan had formed the view that the art agreement was in agreed form and required no further negotiation.

473    Further, Ms Sheehan’s evidence was that during the negotiation of the art agreement she did not consider that by entering into and performing her obligations under the art agreement the artist would risk breaching her contract with State Street (US).

474    Now I have already said something about Ms Hanlan and Mr McDonald.

475    As I have said, Ms Hanlan was ultimately responsible for the acquisition of the replica and the conduct of the MBL campaign. With the assistance of Mr McDonald, Ms Hanlan negotiated the art agreement with the artist and Ms Wolff. And Ms Hanlan executed the art agreement on behalf of MBL.

476    State Street (US) said that during the course of her negotiations with the artist, Ms Hanlan became aware of terms restricting artist’s rights in the New York statue and granting State Street (US) rights which were contained in the master agreement and knew or was wilfully blind and/or recklessly indifferent to the fact that the artist would be in breach of the master agreement if she proceeded to enter into the art agreement. It is said that she was confronted with serious “red flags” throughout the course of negotiations. I would reject these assertions. The relevant factual chronology does not bear this out. In any event the question is one of intention. I will return to discuss the states of mind of Ms Hanlan and Mr McDonald later.

477    At this point and before proceeding further, I should say something about the pleaded case.

478    The relevant part of SSGA’s pleaded case concerning this part of the tort claim is to be found in [65(d) to (j)] of the second further amended statement of claim, which provides:

By reason of the matters in paragraphs 63 and 64 above, Maurice Blackburn, and further or alternatively HESTA and/or Cbus, induced or procured the Artist to breach the Master Agreement inter alia by:

(d)    failing to request approval from SSGA to sell, license or distribute the Replica to Maurice Blackburn, HESTA and/or Cbus, contrary to clause 6(f);

(e)    authorising Maurice Blackburn, HESTA and/or Cbus to use the Artwork as a logo or brand including the display of the Artwork on branded material to promote Maurice Blackburn, HESTA and Cbus, their products or services, contrary to clause 7(b);

(f)    selling, licensing or distributing the Replica to Maurice Blackburn and HESTA and/or Cbus, which are financial institutions, for a commercial and/or corporate purpose, contrary to clause 7(c)(i);

(g)    selling, licensing or distributing the Replica to Maurice Blackburn, HESTA and/or Cbus for use in connection with gender diversity issues in corporate governance and/or in the financial services sector, contrary to clauses 7(c)(ii) and 3(a);

(h)    selling, licensing or distributing the Replica to Maurice Blackburn (a social justice activist group) contrary to clause 7(c)(iii);

(i)    authorising Maurice Blackburn, HESTA and/or Cbus to create, use, display and distribute two-dimensional copies of the Artwork embodied by the Statue, contrary to clause 3 of the Master Agreement and clauses 1(a) and 1(b) of the Copyright License Agreement (which is Exhibit A to the Master Agreement);

(j)    selling, licensing or distributing the Replica to Maurice Blackburn, HESTA and/or Cbus and failing to maintain the reputation, goodwill and standards of SSGA and failing to ensure that the use of the Fearless Girl Trade Mark does not tarnish, dilute, weaken or blur the Fearless Girl Trade Mark and/or SSGA, contrary to clauses 3(a) and 3(d) of the Trademark License Agreement (which is Exhibit D to the Master Agreement); and

479    I will deal with the other sub-paragraphs to the plea in the second part of this section dealing with the conduct after the art agreement was entered into.

480    There are various questions to consider, one of which I have already partly answered. Did the artist so breach the master agreement? What was the knowledge and intention of MBL? Is the pleaded inducement or procurement established?

481    Now given that the knowledge and intention of MBL is required to be shown, the whole context of the negotiations of the art agreement must be taken into account.

482    But let me make two points at the outset.

483    First, State Street (US) has cherry-picked some words and sentences from the communications between MBL and the artist and relies upon those in support of its submission on knowledge. But when those words and sentences are read in the context of the previous communications, or communications immediately thereafter, the meaning State Street (US) attributes to those words and MBL’s alleged knowledge cannot be sustained.

484    Second, whilst knowledge of the precise terms of the contract is not required for the tort of interference with contractual relations, the alleged tortfeasor must have a fairly good idea that the contract benefits another in the relevant respect. So, it is important to consider each of the alleged breaches and whether MBL could be said to have had any knowledge at all as to the existence of the relevant terms of the master agreement. The master agreement is not a standard form commissioning agreement containing usual terms in a contract of that type. Rather, its substance is bespoke and its form is dense and complex.

485    Let me now draw out some aspects of the chronology that I have set out earlier.

486    As I have said, on 22 June 2018, Mr McDonald was asked by MBL to advise it on the purchase of the replica. Ms Sheehan forwarded to Mr McDonald the email sent by the artist to MBL on 18 June 2018 attaching the draft art agreement and the notes for purchase. At the end of the notes for purchase the artist offered the services of her lawyer, “Nancy Wolff, who co-authored the agreement I have with State Street Global Advisors in clarification of promotion so that you are protected”. That is, Ms Wolff’s services appeared to be offered to MBL so that MBL could be sure its purchase and use of the replica would not cause any issues vis-à-vis State Street (US). Mr McDonald looked up who Ms Wolff was, noting that she was stated to have extensive experience in copyright and trade mark law in the US. So, Mr McDonald was careful to check the experience of the artist’s legal representative.

487    Now State Street (US) has criticised MBL for not calling the artist or her lawyer, Ms Wolff. But the criticism is misconceived. The only relevant issue concerning their evidence was the information that they imparted to MBL and its solicitors, and this was fully disclosed in the evidence. MBL produced lengthy evidence from both the artist and Ms Wolff in terms of contemporaneous records that supported MBL’s position that it was assured by the artist and Ms Wolff that neither the purchase of the replica by MBL nor the launch event posed any difficulties in terms of the master agreement. MBL’s own witnesses were able to give their own accounts of their respective dealings with the artist and Ms Wolff, and did so without the fetter of any legal professional privilege otherwise available to MBL. Further, neither the artist nor Ms Wolff were in the camp of or under the control of MBL. Further, it is doubtful in any event that these witnesses would have been prepared to give evidence. The artist is being sued in the US by State Street (US). Further, there may have been privilege issues in Ms Wolff giving evidence.

488    Let me proceed with the chronology.

489    Mr McDonald noted that the draft art agreement expressly permitted a purchaser to identify the replica by its title and to use images of it for “newsworthy” articles in any media. He noted what appeared to be an inconsistency between the exhibition, publishing and promotion clause and the “no branding use” clause, concluding that in order to make sense, the latter must be directed at prohibiting use of the words Fearless Girl and the artwork, being the replica or images of it, as a brand in a commercial sense and to promote MBL’s service offerings, rather than the use of the words Fearless Girl, the replica or images of it in connection with the MBL campaign. Ms Hanlan understood that the exhibition, publishing and promotion clause allowed MBL to promote the campaign through MBL’s social media channels.

490    Mr McDonald proceeded to amend the draft art agreement having been made aware of how MBL wanted to use the replica, including to promote it and the MBL campaign on social media, consistently with what Ms Wolff’s notes for purchase had expressly stated was allowed.

491    Whilst Mr McDonald knew MBL did not want to use the image of Fearless Girl as a trade mark, he highlighted the prohibitions in the draft art agreement to MBL in case the MBL campaign was still in the planning stages and Ms Hanlan might in the future consider using the replica to advertise MBL’s legal services. He wished to flag to Ms Hanlan that she should ensure that other people working with MBL would not, for example, seek to use the replica as a brand for MBL’s services, in case there had been discussions with potential co-contributors of which he was unaware.

492    In his amendments, Mr McDonald inserted into the clarifications to the “no branding use” clause setting out specifically what he understood MBL and the co-contributors wanted to do with the replica and stipulating this conduct as approved by the artist.

493    On 27 June 2018, Mr McDonald provided MBL with his proposed amendments. On 3 July 2018, in a response from Ms Hanlan, she sought clarification around the scope of the “no branding use” clause and specifically highlighted that MBL’s co-contributors in the MBL campaign may be financial services organisations. She also sought to make sure that MBL could put logos on the plaque to be placed with the replica. Rather than ignoring the possible import of the “no branding use” clause, Ms Hanlan raised with Mr McDonald that this clause was her biggest concern and that MBL needed the artist to either remove it or explain what the intention of the clause was, because she did not really understand what it was intended to mean. More importantly, she wanted to make sure MBL could partner with superannuation companies, which she assumed “would be considered ‘financial services’ companies”.

494    At Ms Hanlan’s request, Mr McDonald prepared the table of amendments to be sent to the artist along with the revised draft art agreement. I have set out relevant aspects of the table earlier.

495    Indeed, far from concealing how the campaign and the replica would be promoted and the types of companies that would likely be partners in the campaign, MBL expressed these things clearly to the artist and Ms Wolff.

496    Now as to State Street (US)’s submission that Mr McDonald’s statement in the table of amendments was incorrect because only HESTA had agreed to participate in the campaign at this point, such a submission takes it nowhere. Mr McDonald’s statements in the table of amendments clearly put the artist and Ms Wolff on notice that the campaign partners would or would likely be financial services companies.

497    Now on 14 July 2018, the artist responded with further comments on the draft art agreement having obtained advice from Ms Wolff. Mr McDonald understood Ms Wolff had made the changes to the draft art agreement at the artist’s end. I have earlier set out aspects of the artist’s covering email.

498    As I have already said, Ms Wolff had reinstated wording into subclauses (1) and (2) of the “no branding use” clause, noting in respect to subclause (1) that it was “required language per Artist Agreement with State Street” and in respect to subclause (2) that “[t]his must be retained per Artist Agreement with State Street, this means that the artwork cannot be used to promote a company in the financial sector”.

499    Mr McDonald noted that Ms Wolff had not made any amendments to the clarifications to the “no branding use” clause and that neither she, nor the artist, had told MBL that it could not partner with a financial services company in relation to the MBL campaign, despite this being stated expressly in the table of amendments.

500    Mr McDonald concluded that the statement that “the artwork cannot be used to promote a company in the financial sector” accorded with his understanding that the artwork could not be used as part of a financial services company’s branding or to advertise its services, and could not be used in a manner unconnected with the MBL campaign, but that it could be used by a financial services company in relation to the MBL campaign.

501    Now as I have said, sometime in the week commencing 23 July 2018, Ms Hanlan had a conversation with the artist. Ms Hanlan was explicit about MBL’s plans for the replica as part of MBL’s campaign, including promoting it on the MBL website, for internal communications, in relation to press releases and promotional materials for a launch event or events. Ms Hanlan’s recollection was that the artist did not say that she had an issue with the proposed use. I accept that recollection.

502    On 27 July 2018, Ms Hanlan sent Mr McDonald an email, having been left with the impression that the artist understood how MBL (and its partners) intended to promote the replica as part of the campaign. Following her 23 July 2018 conversation, Ms Hanlan indicated that the artist “thought it should all be fine” but indicated that “we need to be sure!”.

503    Now Ms Hanlan was relying on Mr McDonald to deal with the technicalities of the draft art agreement and it was apparent that the artist was dealing with Ms Wolff at her end. But Ms Hanlan and the artist were engaged in informal communications as lay people. This may explain why Ms Hanlan was left with an impression after the 23 July 2018 conversation with the artist but still sought to be sure in a formal sense as indicated in her 27 July 2018 email. But whatever Ms Hanlan’s recollection of that call, following that call Ms Hanlan instructed Mr McDonald as to exactly how, and in what media channels, MBL wanted to publicise the replica and the campaign, and that information was sent to the artist. Ms Hanlan did not hide from the artist that MBL wished to use images of the replica on, for example, social media, which is necessarily branded with the company name, or that the campaign partners would be financial services companies.

504    Now in response to the artist’s 14 July 2018 amendments, and following on from Ms Hanlan’s 27 July 2018 email, late in July 2018 Mr McDonald sought to ensure that how MBL intended to use the replica was made clear to the artist and Ms Wolff. Mr McDonald further amended the clarifications to the “no branding use” clause to make specific reference to financial services companies. He forwarded his proposed changes to MBL on 30 July 2018. I have set out details of this earlier.

505    On the same day, the revised draft art agreement was sent to the artist by Ms Hanlan with a note in the covering email which I have previously set out.

506    The clarifications to the “no branding use” clause were to be read in conjunction with the exhibition, publishing and promotion clause to put beyond doubt what the scope of the “no branding use” clause was.

507    Now as I have said, on 31 July 2018, Ms Wolff and the artist responded separately to Mr McDonald’s revised draft art agreement. The artist referred to State Street (US)’s Fearless Girl trade mark and stated that this meant that co-contributors may use their names but not their logos in conjunction with the work. The artist went on, “[i]n regard to social networking, so long as the work is positioned as a gift, it should be ok since the Fearless Girl name is common place and all over the media”. The artist’s response was interpreted by Ms Hanlan and Mr McDonald to mean that she was insisting on a prohibition of logo use on the plaque, but was happy to allow MBL to use images of the replica on its branded social media pages, provided the replica was positioned as a gift. In my view that interpretation was reasonable.

508    Now State Street (US) submitted that there was no evidence that the replica was to be or was gifted. But Ms Hanlan’s evidence about what was understood was meant is not unimportant. Ms Hanlan stated:

Well, that’s – it was about it being displayed in a public place. So she’s displayed in a public place at Fed Square, albeit without a plaque, but that was what she meant – said to me when we were talking about it being gifted. She didn’t want it to end up sitting in the reception centre of a – you know, a business. She wanted it to be in public.

It’s been – the gifting of it to the people was about it being unveiled in a public place, which we did. So I would have said in all honesty that we’ve gifted it.

509    Now the artist suggested a conference call with Ms Wolff, who was copied in on the email thread, “for your protection and my own”. The artist was effectively telling Ms Hanlan that Ms Wolff’s view on how the replica could be used consistently with the master agreement was authoritative. Ms Wolff’s subsequent email began with the words “I am Kristen’s attorney and the one who negotiated her agreement with State Street”.

510    Both the artist’s and Ms Wolff’s emails confirmed that due to Ms Wolff’s intimate knowledge of the master agreement, she was in a position to ensure that the artist would not breach the terms of that agreement in entering into the draft art agreement with MBL.

511    Now Ms Wolff indicated in her email attaching a further revised version of the draft art agreement that she had made some “slight modifications”, which were the clarifications to the “no branding use” clause and the credit clause that I have discussed earlier in my reasons. But there was no suggestion of widespread changes or issues of significant concern requiring attention.

512    On 31 July 2018, and as I have said, the first telephone call took place between Mr McDonald and Ms Wolff.

513    As I have said, prior to the call Mr McDonald quickly reviewed the document noting that Ms Wolff had struck through some of his proposed insertions in the clarifications to the “no branding use” clause, in particular the proposed wording, “(and including any bank, superannuation fund or other financial services entity)”. Mr McDonald noted briefly that Ms Wolff had said that this was “not necessary to include”. Mr McDonald also noted the deletion of the words “whether or not such also carry their logos or other branding” in subclause (c)(iii) of the clarifications to the “no branding use” clause. Mr McDonald noted that Ms Wolff had sought to delete what she regarded as “not necessary” rather than seeking to limit what MBL and its co-contributors might do under the clarifications to the “no branding use” clause. Mr McDonald agreed with Ms Wolff’s conclusion that it was not necessary to include this wording. He said in cross-examination:

The clarity section – for clarity … sets out very clearly what my client wanted to do with the work together with the promotion, exhibition and use – publicity clause, so my concern was just to make certain that the no branding clause stayed properly within the scope of the intention of the parties.

514    Mr McDonald thought that Ms Wolff had regarded his additional wording concerning superannuation organisations and other financial organisations as not necessary in terms of recording the intention of the parties. But if Ms Wolff had then indicated to Mr McDonald that MBL could not partner with a financial organisation, he would have regarded it as a significant matter. But she did no such thing.

515    Further, I note that in Ms Wolff’s changes, she had left in the clarifications to the “no branding use” clause the right for MBL and co-contributors to refer to and use:

… images and footage of the Artwork in connection with the acquisition of the Artwork:

i.    in their social media (including, without limitation, Face Book, Twitter, Instagram, YouTube and Linked in);

 ii.    on their websites; and

iii.    in their newsletters or other publications (and including in media releases and other promotion around “Equal Pay” issues including for Equal Pay Day in Australia and Equal Pay Potential Project)

516    Now as I have said, the call between Ms Wolff and Mr McDonald lasted about fourteen minutes. Ms Wolff indicated to Mr McDonald that the “no branding use” clause was required under the artist’s agreement with State Street (US). Mr McDonald informed Ms Wolff that MBL and the co-contributors did not intend using the replica as a brand. Reference to the use of logos concerned use on the plaque. This issue was resolved whereby only the names of MBL and its co-contributors would appear on the plaque.

517    Mr McDonald was satisfied that Ms Wolff understood how MBL and its co-contributors intended on using the replica and agreed to such use. Further, there was no mention by Ms Wolff of superannuation funds or other financial services companies not being permitted to be co-contributors or that any of the proposed uses by MBL and its co-contributors under the clarifications to the “no branding use” clause would or may cause the artist to breach her agreement with State Street (US). Mr McDonald and Ms Wolff did not discuss Ms Wolff’s comments around her deletion of wording in the “no branding use” clause. It was only after the call that Mr McDonald noticed the comment “we prefer not to call this out”. But he did not dwell on those words in light of the conversation he had just had with Ms Wolff.

518    In my view, given that Mr McDonald was speaking with the lawyer who co-authored the master agreement, and whose services had been offered by the artist to help advise on the art agreement given her knowledge of the agreement with State Street (US), it was reasonable to assume that Ms Wolff would raise any issues with the art agreement vis-à-vis the artist’s agreement with State Street (US). And it was reasonable to assume that Ms Wolff would advise her client appropriately if she thought the art agreement would cause her to breach her agreement with State Street (US), and that Ms Wolff would not lead the artist into breaching the master agreement.

519    In my view, it was also reasonable to assume that the clarifications to the “no branding use” clause were not going to lead the artist to breach her agreement with State Street (US). In my view, Mr McDonald rightly assumed that if Ms Wolff perceived a problem between the artist and State Street (US) that that would have been dealt with so that whatever she was proposing in the draft art agreement could be accepted as not putting her own client in breach of the master agreement.

520    Now at this point let me say something further concerning Mr McDonald’s evidence and State Street (US)’s submissions thereon.

521    State Street (US) said that Mr McDonald’s basis for allegedly not having any concern or apprehension that the art agreement would risk putting the artist in breach of her agreement with State Street (US) should not be accepted when the “universe of material” consisted of Mr McDonald looking Ms Wolff up on the internet, a short conversation with Ms Wolff, the relevant emails regarding amendments to the draft art agreement, and Ms Wolff being the lawyer who had negotiated the agreement with State Street (US). I would reject State Street (US)’s submission.

522    Now State Street (US) pointed out that the position insofar as the major amendments were concerned, leaving the issue of logos to one side, including MBL partnering with a financial organisation, was the following:

(a)    First, other than the first sentence, Mr McDonald deleted subclause (1) in the “no branding use” clause, which amendment was rejected by Ms Wolff.

(b)    Second, Mr McDonald deleted subclause (2) in the “no branding use” clause, which amendment was rejected by Ms Wolff.

(c)    Third, the table of amendments relevantly stated in relation to the amendments to the “no branding use” clause: “The amendments here reflect the needs of MB[L] and co-contributors to the payment (which may include Australian superannuation funds) to use images on their websites and in newsletters, which will carry relevant branding (including in URLs)” and “We welcome further discussion on this clause to ensure that, while the Artist’s interests and concerns are protected, MB and the co-contributors (each of which is a commercial entity and some of which will be organisations in the ‘financial services’ sector) are not restricted from using the Artwork in the ways that are listed”.

(d)    Fourth, Mr McDonald introduced the words “(and including any bank, superannuation fund or other financial services entity)” into the clarifications to the “no branding use” clause, which were rejected by Ms Wolff. State Street (US) says that it may be noted that there was never any discussion between Mr McDonald and Ms Wolff as to the identity of MBL’s partners. But as is apparent, the table of amendments stated that the co-contributors may include superannuation funds.

523    In the circumstances, so State Street (US) said, it cannot be maintained that the artist had consented to MBL’s campaign partners being superannuation funds or companies in the financial services sector. It said that no direct evidence was given that she did consent. Further, it said that to the extent that it was being suggested that an inference could be drawn that the artist did consent, such an inference was based on documents which were ambiguous and contained clear warning signals to MBL and Mr McDonald that the artist had not in fact consented.

524    I would reject State Street (US)’s submissions. In my view they distort the true factual picture and the real issue. The fact is that these negotiations demonstrate the bona fide mind-set of Mr McDonald that superannuation entities could be used as sponsors.

525    Further, State Street (US) said that to the extent that Mr McDonald’s evidence was that he could accept at face value what he was told by Ms Wolff, it followed that when either Ms Wolff or the artist rejected proposed amendments to the draft art agreement he must have realised the amendments were unacceptable to the artist due to the legal constraints placed upon her by the master agreement. But even accepting that logic for a moment, whatever was left in the final form of the art agreement as to what was permitted and the freedom the final form gave could clearly have been taken by Mr McDonald to be permitted and consistent with the master agreement. In other words, State Street (US)’s argument is a two-edged sword.

526    Let me continue to draw out some other themes from the chronology.

527    On 5 August 2018, the artist emailed Ms Hanlan noting that their respective lawyers had spoken and referring to State Street (US)’s trade mark rights, hoping MBL would be “able to work around that”. Ms Hanlan assumed that the artist was referring to the use of logos on the plaque, which was understandable given that was what the artist was talking about in her email a day earlier. There was no reason to assume that the artist meant anything untoward by her comments, as the deal was all but done.

528    Now the timing of the deal was delayed, but this was due to MBL looking for organisations to partner with in the campaign.

529    Ms Hanlan and the artist continued to correspond from time to time. An update to the artist on 31 August 2018 again referenced the partners in the MBL campaign, who at that stage included HESTA. Ms Hanlan also mistakenly thought it to be the case that Bendigo & Adelaide Bank was a partner. The artist raised no objection in response.

530    In September 2018, after having seen a mock-up of the plaque, the artist included in an email a requirement for attribution. But it was attribution of her as the artist that was required, rather than any other attribution.

531    In mid-September 2018, Ms Hanlan informed the artist that MBL was considering moving the date for the unveiling of the replica to International Women’s Day in 2019. The artist responded, consistent with what she had said on 13 June 2018, that State Street (US) had three more replicas of the New York statue and she was unaware of the planned location for at least one of these. No doubt she wanted to keep pressure on MBL.

532    On 21 September 2018, Ms Hanlan said to the artist that it would be terrible if MBL “locked it all in and then they [SSGA] unveiled her in aust before iwd!”, which was a reference to International Women’s Day. In her response the following day, the artist stated that this is “why I would urge you to unveil in late November or December”. The artist also notified Ms Hanlan that despite a request from State Street (US) to purchase one or two more replicas, she had declined as “they already own four and, though Fearless Girl has her roots in the financial industry, she has a much broader message than just the assertion of women in finance”. So in effect Ms Hanlan was being told that the artist was within her rights to sell the replica, despite State Street (US) having other replicas and seeking further replicas, and that the artist and State Street (US) were working independently of one another such that she could not predict when or how State Street (US) would make use of the other replicas that it owned.

533    Now I agree with MBL that there was nothing untoward about raising the possibility of State Street (US) unveiling a replica in Australia before MBL. Now MBL was interested in making an impact with its novel approach to the campaign. But whether it was first or otherwise had nothing to do with any perceived association with State Street (US). Further, this was all commercial leverage by the artist, who encouraged MBL to purchase a replica and unveil it earlier than MBL had planned. In my view this was the opposite of the artist being prevailed upon or persuaded by MBL to breach any of her contractual obligations to State Street (US).

534    Let me move further forward.

535    On 1 December 2018, Ms Hanlan informed the artist that Cbus and HESTA, “both superannuation providers”, were 100% locked in to join MBL as campaign partners and that Ms Hanlan was hoping to get some other contributors on board. She mentioned that she had spoken to Bendigo & Adelaide Bank who were very keen. The artist’s response elicited no objection.

536    Ms Hanlan continued to express concerns about State Street (US) unveiling in Australia before she could finally get MBL’s deal over the line. But Ms Hanlan’s concerns about State Street (US) unveiling a replica were understandable. Ms Hanlan was buying a replica to unveil at the launch of a very public campaign, at not insignificant expense, and she did not want someone else, whether State Street (US) or another third party buyer, to unveil the same replica before MBL’s campaign launch. In subsequently seeking exclusivity from the artist, Ms Hanlan thought she was doing her job properly.

537    On 14 December 2018, in a conversation with Ms Hanlan, the artist mentioned that State Street (US) was seeking additional replicas. When queried about this, the artist reassuringly informed Ms Hanlan that State Street (US) had not objected to the unveiling of the replica at the Grand Hotel in Oslo, Norway. Moreover, Ms Hanlan was conscious that the artist had been very public about her desire to spread the message of Fearless Girl by selling replicas.

538    On 21 December 2018, the artist sent an email to Ms Hanlan and asked “[w]hat happened with your last partner in Fearless Girl?” and said “[j]ust double checking, none of the sponsors are financial organizations, right?” because this was “the one caveat I must adhere to”.

539    As I have said earlier, Ms Hanlan was confused by this email, given that both her and Mr McDonald had made it clear on a number of occasions that superannuation funds were going to be involved and that negotiations between Mr McDonald and Ms Wolff had been concluded. Ms Hanlan assumed that the artist’s question was not about the superannuation partners who the artist knew from her 1 December 2018 email (and earlier, in relation to HESTA) were already on board. Ms Hanlan assumed that the artist was concerned about the possibility of Bendigo & Adelaide Bank coming on board (being the “last partner”) given that she had indicated in her earlier email that they were “very keen”. Ms Hanlan thought that until that situation was confirmed, she saw no need to respond on this point.

540    In my view, Ms Hanlan did not turn a blind eye to a potential issue being raised by the artist. Nor was Ms Hanlan recklessly indifferent to whether or not proceeding with the deal with HESTA and Cbus was going to cause the artist to breach her agreement with State Street (US).

541    Ms Hanlan maintained throughout her cross-examination that she saw nothing new as having been raised in the artist’s 21 December 2018 email. And so she did not see the need to disclose the email to anyone.

542    In my view, the reason why Ms Hanlan did nothing with the artist’s 21 December 2018 email was because Ms Hanlan did not think that MBL was breaching anything. Ms Hanlan stated:

Because I had been sharing with everyone who all the partners were up – I had been so transparent and about the potential partners were, and what industries that they were in. And I had shared it with [the artist]. I had shared it with [Ms Sheehan] , and I – with [Mr McDonald]. It was really – it was common knowledge. And so when this email came in, everything had been good. And everything – I had gotten no knockbacks. The only thing that had been knocked back at this point was that I couldn’t put a logo on the plaque. That’s the only thing, and I conceded that. And then I shared who all of our partners were … And then [the artist] said this, and I was confused by why she was mentioning this. But nothing had changed. And whilst it – because it was very late in the year, I was waiting to hear back from any last-minute partners who might also want to come on board, so I could then 100 per cent confirm who the list of people were.

543    Further, I agree with MBL that it should also be appreciated that the nature of the communication between Ms Hanlan and the artist was of a different nature to that between Mr McDonald and Ms Wolff. They cannot be read as a communication of the same legal import, effect or comprehension as that between the lawyers.

544    In any event, Mr McDonald indicated that had he been made aware of the artist’s 21 December 2018 email, he would have been satisfied that MBL could rely on the way the art agreement had been negotiated, given that Ms Wolff had been involved very closely with that and “obviously with an eye to what State Street did or did not require”.

545    Moreover, as he saw it, the earlier removal by Ms Wolff of the reference to financial organisations in the clarifications to the “no branding use” clause had nothing to do with prohibiting the identity of the sponsor. Mr McDonald was of the view that MBL had certainty about who it could partner with. That certainty came from the fact that:

… if that was a matter of concern for [the artist] or for Ms Wolff, they would have raised this very early on. The entire tenor of the agreement is to do with what people can do with the sculpture. It is nothing to do with who may acquire the sculpture. At no point did they raise with us, “By the way, we know that you’re talking about these as partners. You will need to get other partners”. So my certainty comes from the fact that, if this were an issue, they would have raised it. We flagged it to them. They did not raise it as an issue. I think I could rely on Ms Wolff to look after the interests of her client and, indeed, to make certain that the agreement that we formed was conformable with the agreement [the artist] had with State Street.

546    Now State Street (US) says that MBL’s explanation of Ms Hanlan’s understanding of and reaction to the 21 December 2018 email is unpersuasive. In particular the following points are made. First, it says that Ms Hanlan’s evidence that she did not disclose the email to anyone else at MBL as “nothing new” had been raised by the artist is contrary to the wording of that email, namely, the “one caveat I must adhere to” comment, and should be rejected. Second, it is said that MBL cannot rely on the lack of clarity in its dealings with the artist and her lawyer as an explanation for why Ms Hanlan reacted inappropriately to the 21 December 2018 email. Despite Ms Hanlan being “confused” by the email, she chose not to share the email with anyone, nor make any further enquiry with the artist or Ms Wolff. Third, it says that Ms Hanlan’s explanations for the failure to share the email or seek further clarification should be rejected. I should say here that I disagree. Ms Hanlan was a credible witness in terms of her explanations. Moreover and importantly, Ms Hanlan was not a lawyer.

547    Further, State Street (US)’s obsession with the 21 December 2018 email is misplaced for another reason. Its submissions ignored the fact that the art agreement was not signed on 21 December 2018. What happened some two weeks later is relevant to the issue. I will come to this now.

548    On 3 January 2019, Ms Hanlan informed the artist that she had authority to go ahead with the purchase. The subsequent email exchange that took place from 3 to 10 January 2019 between the artist and Ms Hanlan is quite at odds with State Street (US)’s case concept.

549    The artist first asked to review the campaign partners. Ms Hanlan responded informing the artist that it was MBL, “Hesta (superannuation)” and “Cbus (superannuation)” and that “Its possible we might also have a bank…”. The artist then replied:

OK. Good to know. So long as Maurice Blackburn is signing the agreement. Technically, I cannot sell to another financial company. So long as the work is not used for any commercial or corporate purpose or as a brand identity for your sponsors but, instead is promoted as a GIFT to the Australian people, we are good. As we discussed earlier, unfortunately, we can’t use logos on the plaque. I did review all of this with lawyer so, we are in good shape. My agreement with SSGA is written so that another company cannot use the same work to promote their brand. Focus on the fabulous visibility nationally and in the global arena that Fearless Girl provides.

550    So, MBL was being told by the artist that based on her own legal advice (“I did review all of this with lawyer, so we are in good shape”), so long as the replica was promoted as “a gift” to the Australian people MBL could proceed as planned with no issue vis-à-vis the “no branding use” clause of the art agreement.

551    Ms Hanlan understood that the artist was happy with everything that Ms Hanlan had proposed in her email, including both the names and industries of the campaign partners.

552    So, from the email exchanges from 3 to 10 January 2019, MBL’s intention to partner with Cbus and HESTA was made clear and was approved by both the artist and Ms Wolff. No issue of a possible breach of the master agreement had been raised and neither Mr McDonald nor MBL had any impression that such a breach might arise.

553    Further, Ms Hanlan had always planned that MBL would purchase the replica in order to control the acquisition process. She understood that it was already agreed how MBL and its campaign partners would use the replica. From Ms Hanlan’s perspective, the draft art agreement had been negotiated in 2018, including the terms dealing with how MBL and its campaign partners intended to use the replica, and nothing had changed since that time. Ms Hanlan did not think that the artist’s comments raised any new issue.

554    Further, when Mr McDonald was asked about the artist’s comments in the 3 to 10 January 2019 email exchange, which he did not see at the time, he stated:

Well, my reaction, your Honour, is really to read it as a whole, and to take comfort from the fact that what we were doing was still within the scope of that, and also it indicates that the lawyer, Ms Wolff, was still involved with the process. And I would have assumed, had – again, with a hypothetical – that, if there was a problem, it would be, “We can’t sign this until this is sorted out”. Again, reliance on Ms Wolff to really bring to the table – take the whole agreement off; cancel the negotiations unless or until they have the right assurances even to include warranties in the agreement to the effect that no purchase, or anybody involved, will be involved with it.

555    So, to the extent that the artist’s 21 December 2018 email is said to constitute a red flag for Ms Hanlan, that red flag, if it arose at all, was neutralised by the 3 to 10 January 2019 emails. At that stage the artist has been made aware of the identity of the campaign partners and confirmed that she had reviewed “all of this” with her lawyer and that “we are in good shape”. That was the last relevant communication between the artist and MBL before the art agreement was signed on 6 February 2019.

556    Now during her cross-examination, Ms Sheehan accepted that she would have expected to have been shown these emails by Ms Hanlan, having previously asked Ms Hanlan to copy her on correspondence with the lawyers. Ms Sheehan’s evidence was that she would have found the statement in the artist’s 21 December 2018 email (regarding the involvement of financial services organisations) “a little odd”, and that she would have either raised the issue with Ms Hanlan or forwarded the email to Mr McDonald and asked him to seek clarification.

557    And Mr McDonald conceded that, if he had received the emails, he might have suggested to Ms Hanlan that she respond to the artist by suggesting she speak with Ms Wolff about the matter. But Mr McDonald’s comments concerning the 21 December 2018 and the 3 to 10 January 2019 emails sent to Ms Hanlan by the artist were in the context of a hypothetical question and in circumstances where any supposed issues that the artist was expressing on 21 December 2018 were neutralised by 10 January 2019. By that date, the artist had (again) been made aware of the identity of the partners and had confirmed that she has reviewed “all of this” with her lawyer and “we are in good shape”.

558    State Street (US) has invited me to infer that Ms Hanlan’s failure to show the concerning emails to her legal advisors reflects a conscious decision by Ms Hanlan not to raise the artist’s concerns with Ms Sheehan or Mr McDonald, in case she “discovered a disagreeable truth” that might have adversely impacted upon her acquisition of the replica or its use as part of the MBL campaign. But it should be apparent from what I have said that I decline to draw this inference.

559    Now I have dealt with one of State Street (US)’s “red flags”. Let me deal with another.

560    It says that there was the early and ongoing requirement that the “no branding use” clause be included in the art agreement because of the artist’s contractual obligations to State Street (US).

561    But this does not take State Street (US) far. Rather, this shows that the art agreement was not inconsistent with the master agreement.

562    In any event, although Ms Hanlan conceded that MBL’s brand would be associated with the campaign, she stated that this was an aspect of the campaign, but by no means its focus. Further, branding was in the context where they were “looking for a media opportunity thats going to allow us to talk about why all partners have come together, why we’ve invested in Fearless Girl, what each of our organisations are doing to champion equal pay and wage equality”. It was clear from the evidence that gender wage equality was the focus of the MBL campaign, and that the presence of brand names was necessary to lend legitimacy to the campaign, in order to show that a diverse group of companies were supporting the cause.

563    Further, I reject the suggestion that Ms Hanlan had a strong desire that the MBL campaign should proceed come what may and regardless of any restrictions or limitations to which the artist may have been subject. The evidence of Ms Hanlan was that if she thought she was breaching something, then the campaign would not have gone ahead. There was no commercial rationale for going ahead in the face of any prohibition proposed by the artist or her lawyer.

564    In summary, at the time it entered into the art agreement, MBL did not have any actual knowledge of the possibility of a breach by the artist of the master agreement, nor was MBL wilfully blind or recklessly indifferent to the risk of breach. And most relevantly, it did not have the requisite intention required for the tort.

565    Let me at this point also say something briefly about MBL’s knowledge (or lack thereof) of various terms of the master agreement at the time of and prior to MBL executing the art agreement.

566    MBL had no knowledge of cl 1(d) of master agreement. What MBL had been told, through clauses of the art agreement and correspondence from artist, caused MBL to believe that no attribution of State Street (US) by MBL was required. The relevant clauses of the art agreement are:

Credit: It is understood that a plaque with the attribution “Fearless Girl by Kristen Visbal” is to be delivered with the Artwork and that the plaque will bear (or the Client may organize for the plaque to bear) the names of the Client and the co-contributors who sponsored of the Artwork, the general style of which plaque and wording may be approved by the Artist (and which may not unreasonably be withheld or delayed). The Client agrees to install the plaque within 10 feet of the Artwork. The Client further agrees that the plaque will accompany the Artwork should it be relocated at any future date(s).

Attendance at event: The Artist will, at her own cost, attend and speak at an event in Melbourne, Australia organised by the Client in relation to the Artwork during February 2019 (the Event). The Artist will, at Client's request, be available 3 days to speak at various events. Client shall provide Artist with a minimum of two (2) weeks notice of the timing and placement of the Artwork, and shall provide Artist with information concerning the ceremonial plans. The ceremony shall mention that the first casting of the Artwork was placed in Wall Street by State Street Global Advisors of Boston, Massachusetts USA.

567    The artist told Ms Hanlan that artist attribution was required on a plaque. But she did not require that State Street (US) also be named on the plaque. The notes for purchase provided to MBL on 18 June 2018 stated that artist attribution was required, but made no mention of State Street (US). Ms Sheehan was told by the artist shortly before the launch event that she needed to acknowledge State Street (US) in her speech as the commissioner of the New York statue.

568    In any event, no plaque was used.

569    Further, MBL had no awareness of cl 6(a) or cl 6(f) of the master agreement.

570    Further, in relation to cl 7(b) of the master agreement, up to the signing of the art agreement, MBL knew about the restrictions in the “no branding use” clause in the art agreement, the scope of which was clarified by the clarifications to the “no branding use” clause. MBL was informed by the email of 14 July 2018 from the artist that the wording of the “no branding use” clause was required by the artist’s agreement with State Street (US).

571    Further, in relation to cl 3(a) and cl 7(c)(iii) of the master agreement, at the time of signing the art agreement MBL knew about the restrictions in the “no branding use” clause in the art agreement, the scope of which was clarified by the clarifications to the “no branding use” clause.

572    Further, in relation to cl 3 of the master agreement and cl 1 of the copyright licence agreement, up to the signing of the art agreement MBL did not have any knowledge about State Street (US)’s exclusive copyright licence.

573    What MBL had been told, through clauses of the art agreement and correspondence from the artist, caused MBL to believe that the artist was entitled to sell the replica to MBL and permit MBL to use the replica for its campaign. The relevant clauses of the art agreement are:

Representations & Warranties: Artist and Visbal Fine Bronze Sculpture, Inc. represent, warrant and guarantee that:

(1)    … The statue will not infringe upon the intellectual property rights of any third party, including, without limitation, copyright.

Exhibition, Publishing and Promotion: … Subject to the terms of this Agreement, and in addition to any available exceptions under copyright law, Client (and co-contributors to the Cost) may reproduce and authorize the 2-d reproduction of the Artwork to promote or publicise its (and their) acquisition of the Artwork and may include the name of “Kristen Visbal” as Artist, title of the Artwork as “Fearless Girl” and its (and their) name(s) as purchasers of the Artwork. Such promotion and publicity may include print material, website, press and media coverage and social media.

“No Branding Use”: …

For clarity, however: nothing in this clause prevents the Client or companies or firms who contribute to the cost of the Artwork from:

c.    referring to or using (and, where relevant, authorizing use of) images and footage of the Artwork in connection with the acquisition of the Artwork:

i.    in their social media (including, without limitation, Face Book, Twitter, Instagram, YouTube and Linked In);

   ii.    on their websites; and

iii.    in their newsletters or other publications (, and including in media releases and other promotion around “Equal Pay” issues, including for Equal Pay Day in Australia and the Equal Pay Potential Project); …

574    Further, in the artist’s email and notes for purchase sent to Ms Hanlan on 18 June 2018 it was said:

You can promote the work and why the work speaks to your coalition in terms of promoting gender diversity issues and equality but, the description used should omit the word ‘corporate governance’.

575    Further, in relation to cll 3 and 5 of the trademark licence agreement, up to the signing of the art agreement MBL had no awareness of these clauses.

576    Let me conclude this part of my reasons by drawing some conclusions from the above analysis.

577    First, the entry into by the artist of the art agreement did not cause her to be in breach of the master agreement or interfere with her obligations or State Street (US)’s rights thereunder.

578    Second, State Street (US) has failed to show the requisite intention on the part of MBL to interfere with the artist’s performance of her obligations under the master agreement or to procure a breach of the master agreement. Indeed, the evidence of Mr McDonald and Ms Hanlan established the reverse. They at all times sought to ensure that entry into of the art agreement did not trespass over any obligations the artist may have had under the master agreement.

579    Third, to the extent that State Street (US) sought to establish its case based upon knowledge, there are a number of points. Let it be accepted that the guiding mind of MBL was Ms Hanlan. Alternatively, let it be accepted that the minds of both Ms Hanlan and Mr McDonald could be aggregated, and collectively formed the guiding mind of MBL. They did not have knowledge that the artist’s entry into of the art agreement interfered with or put the artist in breach of her obligations under the master agreement. Indeed such entry did not do so. Moreover, neither Ms Hanlan nor Mr McDonald as at or prior to 6 February 2019 had relevant knowledge of the terms of the master agreement. I should also say for completeness that adding Ms Sheehan’s mind to the equation does not assist State Street (US).

580    Fourth, State Street (US)’s case concerning “red flags” or any suspicions of Ms Hanlan concerning the 21 December 2018 and January 2019 emails goes nowhere. Even putting it at its highest, that does not establish the requisite intention required for the tort. State Street (US)’s “guilty mind” case lacked even an air of verisimilitude once one put the relevant emails in the context of the more detailed chronology.

581    Fifth, to the extent that State Street (US)’s case relies on the fall-back position of interference with, as distinct from procuring a breach of, the master agreement, it still does not make out its case. There was no relevant intention. Further, there was no act of procurement or encouragement by MBL to so interfere. The fact is that MBL only ever wanted to contract with the artist in a manner consistent with the artist’s obligations under the master agreement.

(c)    Inducing or procuring the artist’s participation in the launch event

582    Let me now turn to the other dimension of this aspect of the case concerning the conduct of MBL after the art agreement had been signed on 6 February 2019.

583    The pleaded case concerning this part of the tort claim is to be found in [65 (a) to (c) and (k)] of the second further amended statement of claim, which provides:

By reason of the matters in paragraphs 63 and 64 above, Maurice Blackburn, and further or alternatively HESTA and/or Cbus, induced or procured the Artist to breach the Master Agreement inter alia by:

(a)    failing to provide the required attribution to SSGA on the Replica which was used in a promotional or corporate event or ceremony, contrary to clause 1(d);

(b)    discussing issues involving gender diversity in corporate governance in connection with the Artwork at the event for the unveiling of the Replica while promoting Maurice Blackburn, HESTA and/or Cbus, contrary to clause 3(a) and clause 1(a) of the Copyright License Agreement (which is Exhibit A to the Master Agreement);

(c)    failing to use commercially reasonable efforts to ensure that Maurice Blackburn, HESTA and/or Cbus did not use the Replica in a manner that could tarnish or dilute SSGA’s brand or reputation, contrary to clause 6(a);

(k)    failing to notify SSGA of infringement or misuse of the Fearless Girl Trade Mark by Maurice Blackburn, HESTA and/or Cbus, contrary to clause 5 of the Trademark License Agreement (which is Exhibit D to the Master Agreement).

584    Again, I must consider various questions. Did the artist so breach the master agreement? I have partly answered this question earlier. What was the knowledge and intention of MBL? Is the pleaded inducement or procurement established?

585    State Street (US) says that in the period after 6 February 2019 and in the lead up to the launch event, MBL became aware that the terms of the art agreement were inconsistent with the rights and obligations of the artist under the master agreement. It says that by continuing to induce or procure the artist’s performance of the art agreement, including by inducing or procuring her participation in the launch event, MBL unlawfully interfered with the artist’s performance of her obligations under the master agreement.

586    State Street (US) has pointed to the following matters.

587    On 7 February 2019, the Deputy General Counsel of SSGA, Mr O’Malley, first attempted to make contact with MBL regarding its dealings with the artist. He was unable to speak with anyone on that day.

588    On 8 February 2019, Mr McDonald spoke with Ms Wolff. He then sent an email to Ms Hanlan, copied to Ms Sheehan, stating that he “[j]ust had a good call with Nancy” and that Ms Wolff had “stated that they have a 20 page agreement with SS that clearly reserves both the copyright to Kristen and the right to make editions.”

589    On 8 February 2019, Mr McDonald returned Mr O’Malley’s call. Now as at 8 February 2019, Mr McDonald did not have a copy of the master agreement, in redacted form or otherwise.

590    On 12 February 2019, Gilbert + Tobin, State Street (US)’s Australian lawyers, sent a letter of demand to Simpsons regarding MBL’s acquisition and use of the replica. Relevantly, the letter of demand included the following matters.

591    First, there was a section titled “Contractual rights of SSGA and the Artist”, which expressly referred to the master agreement, and stated (at [20] and [21]):

SSGA and the Artist are parties to an agreement dated 12 May 2017 in respect of the Statue, the visual art that is embodied by the Statue (the Artwork), and the FEARLESS GIRL trade mark (the Master Agreement).

The Master Agreement clearly preserves for SSGA the right to use the Artwork in relation to promoting gender diversity in corporate governance and in the financial services sector. The Agreement confirms that SSGA owns the FEARLESS GIRL trade mark, and that SSGA has certain exclusive rights in relation to the Artwork. It specifically acknowledges that use of the Artwork by third party financial institutions, corporations or individuals may dilute, tarnish or otherwise damage SSGA and the SSGA brand. It places restrictions on the Artist’s ability to deal with the rights in the Artwork, particularly in connection with gender diversity issues in corporate governance or in the financial services sector and restrictions on the permitted use of the FEARLESS GIR L trade mark or any sublicensing of such use.

592    Second, there was a section titled “Dealings with the Artist”, which stated (at [36] to [39]):

The Artist’s entry into an agreement to create and sell the Replica to Maurice Blackburn for display in the Melbourne CBD is likely to constitute a serious breach of the Master Agreement.

Given the notoriety of SSGA’s association with the Statue and the FEARLESS GIRL mark, any investigation of the availability of the Statue or any replica would have put Maurice Blackburn on notice that SSGA may have rights over the use of the Artwork and the FEARLESS GIRL mark.

As a prospective purchaser, and a law firm no less, Maurice Blackburn would have been expected to have made inquiries to satisfy itself that there were no relevant restrictions on the creation, use and distribution of any replicas, and that the acquisition was not prohibited by any agreement binding on the Artist. We have no doubt that such an inquiry was made, which would explain why Mr McDonald used language during his call with the senior SSGA attorney referenced above suggesting that Maurice Blackburn had actual knowledge of the terms of the Master Agreement, including knowledge of certain restrictions applicable to the Artist.

There is no information to suggest that a sub-licence to use the FEARLESS GIRL trade mark has been granted by the Artist to Maurice Blackburn. For such a licence to be valid, SSGA’s consent would be required. No consent has been sought or obtained from SSGA. If a sublicence has been purported to be granted that would constitute a breach of the Master Agreement by the Artist. For the avoidance of doubt, in its sole discretion, this is notice that SSGA prohibits the use of the FEARLESS GIRL trade mark by Maurice Blackburn (including in conjunction with financial institutions) in relation to the Replica, as it is likely to harm, tarnish or dilute the SSGA brand or SSGAs reputation.

593    Third, there was a demand requiring undertakings from MBL, inter-alia, that it would not publicly install, show or display the replica in Australia and that it would permanently cease all marketing and promotion of the replica.

594    Now according to State Street (US), the letter of demand put MBL on notice regarding the existence of contractual restrictions on the artist’s ability to deal with the rights in the artwork, and the likelihood that the artist’s entry into the art agreement would give rise to breaches of the master agreement.

595    On 12 February 2019, Mr McDonald sent an email to Ms Sheehan and Ms Hanlan containing a “high-level summary” for Ms Sheehan to provide to the campaign partners. The summary referred to concerns raised by State Street (US), including that “Kristen is in breach of her contractual obligations to State Street (a claim her lawyer has denied)”. It also stated that “Maurice Blackburn has a different view on the issues raised by State Street”. According to Mr McDonald, this email comprised the only written advice to MBL about whether, by entering into the art agreement, MBL risked causing the artist to breach her agreement with State Street (US).

596    On 13 February 2019, Mr McDonald sent an email to Ms Sheehan and Ms Hanlan containing a draft letter in response to the letter of demand. Ms Wolff was copied on that email. The draft letter included the following text:

Ms Visbal has assured our client that she is the owner of copyright in “Fearless Girl” and that there is no restriction, contractual or otherwise, on her calling the sculpture “Fearless Girl”, or on her creating reproductions and selling them around the world. Indeed, we note that one has already been sold and is on public exhibition in Norway and numerous others are in progress.

597    The final version of the letter sent by Simpsons to Gilbert + Tobin was identical to the draft, save that the word “relevant” was inserted before the word “restriction” in the sentence reproduced above.

598    On 13 February 2019, Ms Wolff provided a redacted copy of the master agreement to Mr McDonald. State Street (US) asserts that at this time Mr McDonald became fully aware of all of the relevant terms of the master agreement and on a plain reading of the master agreement would have been aware that carrying out the launch event would lead the artist to be in breach of that agreement. Now Ms Sheehan did not receive the redacted master agreement from Mr McDonald, and she had never requested nor received any advice from Mr McDonald as to whether by continuing to perform the art agreement there was a risk that the artist was in breach of the master agreement. But State Street (US) says that by 13 February 2019, Mr McDonald’s knowledge of the terms of the master agreement can be imputed to MBL in circumstances where that knowledge was acquired whilst acting for MBL in the course of responding to the letter of demand. I am prepared to assume this.

599    I should also note that Mr McDonald gave evidence that around this time Simpsons participated in a conference call with representatives of MBL, HESTA and Cbus and that during that call “we may have talked about – if there was an issue, it seemed, that State Street had the issue with Ms Visbal, not with Maurice Blackburn or any activities here in Australia”.

600    On 14 February 2019, another judge of this Court made an order that certain confidential documents, including the master agreement, to be served on MBL by SSGA be restricted to external lawyers of the parties. On 15 February 2019, having provided a confidentiality undertaking to SSGA’s solicitors, Mr McDonald received an unredacted copy of the master agreement. Now State Street (US) said that Mr McDonald’s knowledge must be imputed to MBL such that MBL had full knowledge of the master agreement from around mid-February 2019. I am prepared to assume this. But I should make the obvious point here that attribution of knowledge to MBL of the terms of the master agreement is one thing. But establishing MBL’s intention, which is the gravamen of the tort, is quite another. Intention cannot easily be inferred from such attributed knowledge. In any event, State Street (US) has not come close to establishing the requisite intention of MBL.

601    Further, in the period after 13 February 2019, Ms Hanlan remained involved in the decision to proceed with the launch event, whilst Ms Sheehan was responsible for providing internal legal advice and communicating the advice MBL received. Ms Hanlan proceeded with the arrangements for the launch event and continued to engage with the artist in relation to that event. Ms Hanlan continued to assure the artist that everything was going to be okay insofar as the launch event was concerned.

602    State Street (US) says that Ms Hanlan, on behalf of MBL, induced and/or procured the artist’s continued performance of the art agreement by organising and coordinating her participation in the launch event, such participation being a term of the art agreement.

603    State Street (US) says that in the circumstances, MBL knew that if the MBL campaign proceeded and the launch event took place, the artist would likely or in fact be in breach of the master agreement. It said that that knowledge can be inferred from the fact that MBL’s lawyers had a copy of the master agreement and could reasonably be expected to have carefully reviewed its terms, in particular, the artist’s position vis-vis that agreement. It is further said that such an exercise would have led to an apprehension that the artist would be in breach of the master agreement. It said that this was established by the evidence of the occurrence of a discussion between Simpsons, MBL, HESTA and Cbus on the subject of State Street (US)’s potential claims against the artist, albeit that there is no evidence of the substance of that discussion. In these circumstances it said that an adverse inference should be drawn against MBL in relation to its knowledge of the likelihood of breaches of the master agreement by the artist.

604    Further, it says that MBL was recklessly indifferent as to whether by proceeding with the MBL campaign and launch event the artist would be in breach of the master agreement. It said that when faced with knowledge, or at least a substantial prospect, that, as a consequence of HESTA and Cbus’ involvement in the MBL campaign and other matters, the artist would be in breach of the master agreement, MBL proceeded, not caring whether or not such a breach would occur.

605    Further, it says that MBL was wilfully blind in that, when faced with the terms of the master agreement and the prospect that the artist would be in breach of that agreement if the MBL campaign and launch event proceeded, MBL did not make further investigations into whether such a breach would occur. It said that there was no evidence that MBL either sought or obtained external or internal legal advice in this regard or took any steps to satisfy itself that the artist was not in breach of the master agreement.

606    I would reject State Street (US)’s submissions for the most part. Let me begin by retracing some of the relevant chronology.

607    As I have said, on 8 February 2019, Mr McDonald had a telephone discussion with Ms Wolff about State Street (US)’s allegations.

608    Following that discussion, Mr McDonald sent an email to Ms Hanlan and Ms Sheehan stating that the call had been good and Ms Wolff had said that “she was outraged that State Street would make any claim on the work”. Later that day, Mr McDonald received an email from Ms Wolff in which she indicated that “[t]hey don’t have an exclusive right to display if we have the right to sell editions. And there is no TM violation in accurately identifying her as FG”.

609    Mr McDonald then had a further conversation with Ms Wolff, which he reported to Ms Hanlan and Ms Sheehan in an email on the same afternoon as follows:

As per her earlier email [Ms Wolff] re-iterated her comment that State Street is trying to push the envelope and get a monopoly that they do not have either as a matter of intellectual property law or contract. On the basis that State Street’s concerns rest on trade mark and exclusive licence issues, she stated that the agreement between MB and Kristen was carefully drafted to avoid any overlap with the rights State Street has been granted.

610    On 9 February 2019, Ms Hanlan and Mr McDonald received an email from the artist copied to Ms Wolff. The artist attached notes for corporate purchase prepared by Ms Wolff, which were similar to the notes for purchase that MBL had received from the artist in June 2018. The artist said that MBL just needed to follow the attached notes to deal with any issues concerning State Street (US). The artist also said that Ms Hanlan and Mr McDonald should remember that Ms Wolff was “at your disposal”.

611    Now as I have mentioned, on 12 February 2019, State Street (US) sent a letter of demand to MBL, via their respective lawyers, regarding MBL’s acquisition and use of the replica. The letter of demand made reference to the master agreement, but did not attach a copy of the master agreement or set out any of its terms. Rather the letter of demand sought to summarise in a general way some of the rights State Street (US) claimed to have under the master agreement and alleged that the artist’s entry into the art agreement was likely to constitute a serious breach of that agreement. The letter of demand then alleged certain causes of action that State Street (US) was said to have against MBL, being contraventions of the ACL and passing off and trade mark infringement claims. Finally, the letter of demand sought various undertakings from MBL, which if not given, it was said, would lead to State Street (US) seeking injunctive relief. But State Street (US) made no claim against MBL in relation to the master agreement with respect to any conduct of any kind, whether prior or anticipated. Rather, it asserted that the artist was in breach of the master agreement by entering into the art agreement. Further, Ms Sheehan’s understanding of the alleged breaches of the master agreement related to the sale by the artist of the replica to MBL under the art agreement, which had already occurred.

612    On 12 February 2019, Ms Hanlan informed the artist about State Street (US)’s allegations and that, as a result, planned events in Sydney and Brisbane would be cancelled.

613    On 13 February 2019, the artist replied in re-assuring terms stating:

Rebecca, I am so sorry. Really. They have no legal right. I have already booked everything- all of my flights and am prepared to speak at each location. Cancelling those events will not resolve the issue with State Street. Let’s proceed!

You asked if SSGA would come after you. I was certain they would not. It is most certainly not in their legal right. I guess they have planned an Australian unveiling, no? The sooner we unveil the better. In any case, this is a tight schedule and has taken a good bit of time to orchestrate. I am there to spread the message behind

Fearless Girl to everyone and the more people I speak with, the better! Your internal events are your own.

In regard to the other events and statues;

The unveiling in Oslo occurred to SSGA surprise. Yes, I do think they called Oslo but, not me and we did not hear anything from my client or SSGA. It was only later I heard something from SSGA.

In regard to the Day Of The Girl event in Paris October 2017, I was scheduled to exhibit a resin and we had planned to take it around the city for photographs with young girls from all over the world (girl ambassadors) when SSGA was served a $5 million fine for paying their female executives less than their male and their black employees less. All Fearless Girl events and my speech were canceled.

Germany, as you know, has not unveiled and the international boarding school in Maryland will unveil in May.

So, the issue is with the stakeholders events? I see that as a wonderful opportunity to spread this message.

My lawyer Nancy Wolff and I will be calling you and Ian McDonald tonight. Let me coordinate with her. Rebecca, I am so sorry. All of the rights were mine but, I was advised to sign the agreement. It is not working out as SSGA wants the work solely for SSGA as a brand identity. In the beginning, I stated that absolutely,. They could use the work to promote their SHE investment fund but, somehow, they ended up requiring that I drop the trademark I had filed on the name and they are using trademark to try and control the work.

Please, be FEARLESS! Let us proceed with ALL of the events we’ve planned.

I will coordinate with Nancy and get back to you.

614    The artist continued to assert that State Street (US) did not have the rights it was alleging and urged MBL to proceed as planned and “be FEARLESS!”. This was hardly any conduct by MBL to induce the artist, but the reverse.

615    On 13 February 2019 (AEST), Ms Wolff sent Mr McDonald a letter, which as a consequence of time zone differences between Australia and the US was dated 12 February 2019, setting out her views on the allegations made in the letter of demand and offered to provide a redacted copy of the master agreement on a confidential basis. Ms Wolff reassured MBL that State Street (US)’s allegations were without merit. Ms Wolff’s letter was a detailed response to the letter of demand based on her understanding and reading of the master agreement, to which she referred in some detail. Ms Wolff dispelled any suggestion of trade mark infringement. Further, on the question of misleading or deceptive conduct, Ms Wolff stated that MBL at no point made any “representation regarding the original statue or any associations with SSGA”. Further, Ms Wolff referred to MBL’s Instagram post, which was annexed to the letter of demand, and stated:

For example, in its post on Instagram, Maurice Blackburn stated that it is bringing the “iconic symbol” to Australia and did not mention SSGA or imply any association to the original statue. HESTA and Cbus’ press releases went even further and expressly stated that the Replica is one of several around the world.

616    Ms Wolff did not express any concerns in relation to the fact that MBL’s logo was clearly visible in that Instagram post. Ms Wolff did not say that MBL’s use of its logo had caused her client to breach the master agreement. Rather, Ms Wolff was positive about the Instagram post and similar posts by HESTA and Cbus.

617    Further, Ms Wolff went on to say that State Street (US)’s allegations relating to any breach of the master agreement were unfounded. Ms Wolff provided some detail of cl 7(c) of the master agreement, cl 1(a) of the copyright licence agreement, exhibit C to the master agreement and cl 3(d) of the trademark licence agreement. In each instance Ms Wolff said that there was no breach. I do not need to elaborate on the detail.

618    Further, at no point did Ms Wolff suggest that the artist had been induced to breach the master agreement by some conduct of MBL. To the contrary, Ms Wolff refuted any suggestion of such a breach.

619    Later that day, Ms Wolff sent Mr McDonald a heavily redacted version of the master agreement on the basis that Mr McDonald not show it to MBL. Mr McDonald passed on Ms Wolff’s letter to Ms Sheehan and Ms Hanlan, but did not forward the redacted version of the master agreement.

620    Further, neither MBL nor Simpsons understood the letter of demand to be putting MBL on notice of the potential for further breaches of the master agreement by the artist.

621    This may be inferred from Mr McDonald’s draft of the communication to HESTA and Cbus for Ms Sheehan to send to inform them about the allegations that had been made. There is no reference in that communication to the allegation or risk that the artist may be in breach of the master agreement by participating in the launch event. Now State Street (US) sought to rely on the statement “Maurice Blackburn has a different view on the issues raised by State Street”, but read in context this statement is a general statement about MBL’s views on the letter of demand.

622    Further, the response prepared by Mr McDonald to the letter of demand did not refer to the master agreement. If Mr McDonald had perceived that allegations were being made against MBL in relation to the master agreement, it would have addressed those allegations. Rather, the letter addresses only the allegations of contraventions of the ACL, trade mark infringement and passing off claims.

623    Mr McDonald sent the draft response to the letter of demand to Ms Wolff for her comment. Ms Wolff replied “We agree. Only restriction on sale is the no branding which your client is observing”.

624    Now State Street (US) sought to make something of Mr McDonald’s addition of the word “relevant” to the final version of MBL’s response to the letter of demand. But the addition of that word should be understood in the light of Ms Wolff’s comment that MBL was abiding by the restrictions relating to use of the name “Fearless Girl” in the “no branding use” clause of the art agreement. Accordingly, Mr McDonald amended the draft letter to properly reflect that, although there were restrictions placed on MBL under the art agreement, these were not relevant because MBL was not in breach of those restrictions.

625    Further, on this aspect, State Street (US) did not respond to MBL’s letter to ask about MBL’s position in respect of the allegations in relation to breaches of the master agreement. The obvious explanation for the absence of such a response is that State Street (US) were not making any allegation about future breaches of the master agreement, despite knowing then about the planned launch event.

626    Further, if State Street (US) was making allegations concerning a future breach of the master agreement, surely they should have provided a copy of the master agreement (in redacted form) to MBL with the letter of demand. They did not. In my view State Street (US)’s argument concerning the scope of what it was asserting in the letter of demand was contrived.

627    Further, even after State Street (US) had first raised objections to MBL’s actions, the artist and Ms Wolff continued to encourage MBL to proceed as planned. MBL did not make any further payment, or otherwise pressure or procure the artist to attend the launch event.

628    Let me now deal with the launch event at this point as it is said, somehow, that the artist was in breach of her obligations under the master agreement in her participation at that event and that somehow MBL induced such a breach.

629    I would reject such a case.

630    First, I do not accept that any such breach has been established by the artist.

631    Second, if there was such a breach, MBL did not procure or induce it. The artist participated on her own volition and at her own expense.

632    Third, MBL had no intention to procure any such breach. For example, it did not vet the artist’s conduct or her speeches at the launch event. Moreover, MBL could reasonably have assumed that the artist would have ensured that whatever she said or proposed to say would not breach the master agreement.

633    The artist made two speeches at the launch event, which were not subject to the direction or control of MBL and MBL had no prior knowledge of what the artist intended to say. This could hardly be said to be inducing a breach of the master agreement by reason of matters the artist chose to raise in her speeches.

634    Fourth, in relation to cl 3(a) of the master agreement and cl 1(a) of the copyright licence agreement, MBL did not have information about what the artist may or may not do at the launch event, save for Ms Wolff’s letter of 13 February 2019 (AEST), which dealt with constraints on the promotion of any third party and use as a brand or logo. The letter also stated that the artist was free to talk about any subject when the replica was not present.

635    Fifth, the art agreement dealt with matters restricting MBL’s usage, but did not address the conduct of the artist at the launch event.

636    Sixth, MBL’s actions after its lawyers received the master agreement in the lead-up to the launch event must also be considered in the context of MBL having received the letter of demand on 12 February 2019. The letter of demand referred to the master agreement and made limited reference to various of its terms. The letter of demand then specifically alleged that the unauthorised use of the Fearless Girl mark by MBL constituted trade mark infringement and that its conduct would constitute misleading or deceptive conduct. In relation to dealings with the artist, the letter of demand stated that the artists entry into of the art agreement to create and sell the replica to MBL for display in the Melbourne CBD was likely to constitute a serious breach of the master agreement. At best, the letter of demand alluded to a breach of the master agreement by the artist by virtue of her having sold the replica to MBL. But by the date of the letter of demand, the art agreement had already been signed and payment had been made, and neither MBL nor its lawyers had seen the master agreement. MBL did not understand from the letter of demand that State Street (US) were alleging that by continuing with the launch event, the artist would breach the master agreement or that MBL was somehow acting to procure a breach.

637    Seventh, having received the letter of demand, MBL informed the artist about State Street (US)’s threats and in response the artist and Ms Wolff continued to assert that State Street (US) did not have the rights it was alleging and urged MBL to proceed as planned. So, MBL was not merely relying upon assurances given by the artist. Rather, it was relying upon the assurances by Ms Wolff, who was the lawyer who had negotiated the master agreement with State Street (US). Further, having received the assurances of Ms Wolff on 13 February 2019, Mr McDonald (and therefore MBL) believed that the master agreement between the artist and State Street (US) was not being breached by means of the sale of the replica to MBL or the launch event.

638    Eighth and generally, significant attention was paid by State Street (US) to what was said or done by the artist and representatives of MBL, Cbus and HESTA at the launch event. In my view, none of this establishes any cause of action.

639    Take what was said by the artist first. I am not satisfied that what she said breached the master agreement. But let it be assumed that she said something about “gender diversity issues in corporate governance” or about “the financial services sector”. And let it be assumed that those statements placed her in breach of the master agreement. Where does this go for State Street (US)? There is simply no evidence to suggest that MBL had any prior knowledge or intention that such would occur. Moreover, there was no evidence of any relevant procurement by MBL of such a consequence.

640    Take what was said or done by MBL second. I do not accept that it breached the art agreement in what it said or did at the launch event. But even if it had, such conduct cannot be retrofitted to somehow establishing the tort of interference with the master agreement.

641    Take what was said by HESTA’s and Cbus’ representatives at the launch event. And let it be assumed that they said something about “gender diversity issues in corporate governance” or about “the financial sector”. That goes nowhere in terms of the tort asserted.

642    At best for State Street (US), what was said or done by MBL, HESTA and Cbus may have relevance to the other causes of action which I will discuss later. But it hardly has relevance to or establishes the tort of interference with the master agreement.

643    Finally, some attention was spent by SSGA in endeavouring to show that MBL, HESTA and Cbus may have breached the art agreement in terms of the question of branding and the use of their logos in association with the replica or its promotion.

644    Now of course if there was such a breach, that cannot be pursued at the suit of SSGA.

645    But I am not satisfied that there was any breach of the art agreement by MBL in any event. But even if there was, that does not establish any breach by the artist of the master agreement, let alone any tort committed by MBL for inducing any such breach. It is a non-sequitur to argue that the former such breach did or could establish the latter. Moreover, and as I have concluded, the entry into of the art agreement by the artist did not place her in breach of her obligations under the master agreement.

646    In summary, I am not satisfied that State Street (US) has established the tort in relation to the pleaded matters post 6 February 2019.

647    Let me make one final point before moving on to the defence. Even if there was conduct by the artist short of a breach of the master agreement, whether before, on or after 6 February 2019, which is said to have interfered with State Street (US)’s enjoyment of its rights under the master agreement, no tort has been committed by MBL concerning interference with such rights. As I have explained, it lacked the relevant intention.

(d)    Defence of honest and reasonable belief

648    In my view and in any event, MBL has established that it held a genuine and reasonably entertained belief that the relevant acts would not be a breach of the master agreement.

649    In Short v City Bank of Sydney, Isaacs J held that to constitute a good defence to the tort, there must be a relevant belief on reasonable grounds. He observed (at 160):

A bona fide belief reasonably entertained that it was not a breach of contract would be fatal to the claim. If the defendant did not know of the existence of the contract, he could not induce its breach; if he reasonably believed it did not require a certain act to be performed, his inducing a party to the contract to do something inconsistent with it could not be regarded as an inducement or procurement knowingly to break the contract; if he believed on reasonable grounds that the contract had been rescinded, or performance waived, when in fact it had not, he could not be said to knowingly procure its breach.

650    Now State Street (US) says that in relation to the belief held by MBL up until signing the art agreement on 6 February 2019, Ms Hanlan’s evidence established that MBL was aware of the State Street (US) rights and the artist limitations under the master agreement, including that there was a particular issue about the use of branding material and the nature of the partners to the MBL campaign. MBL was on notice of those issues.

651    State Street (US) said that the evidence does not support a conclusion that Ms Wolff or the artist provided sufficient information to ground a reasonable belief that the artist would not be in breach of the master agreement if the art agreement was signed.

652    Now MBL also relied on advice from Mr McDonald in entering into the art agreement and as part of the basis of its belief that the artist would not be in breach of the master agreement as a result of the sale of the replica to MBL for use in the MBL campaign.

653    But State Street (US) says that Mr McDonald knew after reviewing the material initially sent to him by MBL that there were a number of different rights that were not owned by the same person or entity. Despite this, he did not request further information about those rights nor did he request to see a copy of the master agreement. He attempted to explain that omission by saying that it was not part of his usual practice to do so in the context of negotiating a commercial licensing agreement. However, State Street (US) said that that needs to be understood in circumstances in which the decision not to seek a copy of the master agreement meant that MBL would not be making an independent evaluation of that agreement, but instead relying solely on unverified information from a counter-party.

654    State Street (US) says that this was not a reasonable approach to be taken by an external, specialist lawyer retained specifically to advise on the drafting of the art agreement and, as such, could not be relied upon as foundation for a reasonable belief. Further, it says that this characterisation does not depend on any evidence being advanced by State Street (US) about what would have occurred if it had been asked to provide a copy of the master agreement to MBL. It said that any attempt by MBL to hypothesise about what State Street (US) would have done if the request was made fails to deal with the fact that a request would have been made in the first instance of the artist and her lawyer, who were the ones who could have asked State Street (US) to provide the agreement. It said that that step was available but not taken and, as such, MBL could not be heard to say, and the evidence did not support, a conclusion that the master agreement was unavailable to it.

655    In any event, the advice given Mr McDonald was given in the absence of any knowledge of the existence or content of the artist’s 12 December 2018 email and the 3 to 10 January 2019 emails. State Street (US) said that Mr McDonald’s advice could not therefore be relied upon by MBL to discharge its onus of establishing the requisite bona fide belief.

656    Further, MBL’s position is that in the period after it was put on notice by the letter of demand of State Street (US)’s concerns regarding MBL’s acquisition and use of the replica, it relied upon reassurances from the artist and Ms Wolff that State Street (US)’s allegations were without merit.

657    But State Street (US) says that from at least 13 February 2019, being the date on which MBL received a redacted copy of the master agreement, MBL and its legal advisors were in a position to form their own views about the artist’s rights and obligations under the master agreement and whether MBL’s purchase and continued use of the replica for the MBL campaign was inconsistent with those rights and obligations. There was no evidence that they did so.

658    State Street (US) says that to the extent that Ms Hanlan tried to suggest that she had been advised by Mr McDonald around 9 February 2019 that it was okay for MBL to proceed as planned, this should be rejected. It says that Ms Hanlan accepted that Mr McDonald was not aware of the artist’s 12 December 2018 email and the 3 to 10 January 2019 emails when giving this advice. As such, reliance on Mr McDonald’s advice in circumstances in which he did not have access to material facts, and in which Ms Hanlan was aware that Mr McDonald had an incomplete understanding of the facts, could not provide a proper foundation for reasonable belief.

659    State Street (US) says that by 13 February 2019, when Mr McDonald was provided with a copy of the master agreement, MBL must have known, entertained some doubts, or at the very least considered, that its conduct or that of the artist, was contrary to State Street (US)’s rights and artist limitations under the master agreement. Although Ms Hanlan gave detailed evidence about her state of mind in the period prior to 6 February 2019, State Street (US) says that save for their purported reliance upon the assurances of the artist and Ms Wolff, there was no evidence from Ms Hanlan, Mr McDonald or Ms Sheehan regarding their views on the artist’s rights and obligations under the master agreement and whether the terms of the art agreement were inconsistent with those rights and obligations once they were provided with a copy of the master agreement. In the circumstances, State Street (US) says that MBL has not discharged its onus to establish a reasonable belief for this period.

660    State Street (US) says that MBL should not be able to escape liability for the tort by relying blindly on assurances given by the artist or Ms Wolff that its acquisition and use of the replica did not put the artist in breach of the master agreement. And even if at an earlier stage in the negotiations between MBL and the artist it was reasonable for MBL to rely upon assurances given by the counter-party to the art agreement, by 14 February 2019 the position was different. By that date MBL knew that the master agreement contained terms restricting the artist’s ability to deal with the artwork. Further, by that date MBL had received the letter of demand that put it on notice that the artist’s entry into the art agreement was likely to constitute a serious breach of the master agreement. Further, by that date Mr McDonald had access to, at least, a redacted version of the master agreement and, by 14 February 2019, an unredacted version, which contained all of the relevant provisions relating to State Street (US)’s rights and the artist’s in relation to the New York statue.

661    State Street (US) says that by 14 February 2019, it was incumbent on MBL to form its own view of State Street (US)’s allegations regarding the inconsistency between the rights granted to MBL under the art agreement and the terms of the master agreement. But it appears it did not do so.

662    State Street (US) says that MBL should not be able to escape liability by its apparent failure to request a copy of the master agreement at that time. To permit this would be to countenance ignorance in the face of circumstances which, on any reasonable view, raised serious questions about apparent inconsistencies between the rights granted under the art agreement and the terms of the master agreement.

663    Further, State Street (US) says that it is no answer to say that MBL was restricted from accessing the redacted master agreement due to confidentiality, as there was no evidence of any limitation on the distribution of the redacted version of the master agreement. Further, it says that it was no answer to say that, when this proceeding was commenced, State Street (US) claimed confidentiality over the master agreement. The master agreement was available to MBL upon provision of a confidentiality undertaking in standard form. Further, it says that neither is it an answer to say that, when a request for the master agreement was made on 9 September 2019 by Simpsons, on behalf of MBL, to SSGA’s solicitors, the request went unanswered. State Street (US) says that none of those matters change the fact that MBL elected not to make any such request in February 2019 or at any time prior to the launch event. For completeness, the request made by Simpsons on 9 September 2019 was in the following form:

Please find enclosed the confidentiality undertaking executed by Adam Simpson of this firm.

Now that the preparation of our client’s evidence is underway, and so that we can obtain instructions from our client, we seek the Applicants’ consent to disclose the Confidential Documents and Confidential Information to the following individuals:

    Jennifer Kanis, the principal solicitor instructing us in this matter; and

    Kara Sheehan, our client’s general counsel.

Please confirm whether your clients consent so that we can obtain executed confidentiality undertakings in the agreed form.

664    State Street (US) says that by 13 February 2019, Ms Hanlan and Ms Sheehan knew that the master agreement contained terms restricting the artist’s ability to deal with the artwork. It says that Ms Hanlan must have still harboured doubts from the unresolved issues raised by the artist in the artist’s 21 December 2018 email and the 3 to 10 January 2019 emails. It says that in the face of the allegations in the letter of demand that the artist’s entry into the art agreement put her in breach of the master agreement, it is inconceivable that Ms Hanlan and Ms Sheehan did not turn their minds to whether any such breach had occurred or might occur.

665    Further, State Street (US) says more generally that the reasonableness of any such belief must be assessed by reference to a person in the position of MBL, which in this case includes Mr McDonald and Ms Sheehan, both qualified and experienced legal practitioners. The question of reasonableness must therefore be assessed by reference to what course of action a qualified and experienced solicitor in the position of Mr McDonald or Ms Sheehan could have been expected to take when faced with the information they had at the relevant time.

666    State Street (US) says that whatever be the position prior to 13 February 2019, the evidence led by MBL did not establish that, after that date, MBL did, in fact, have a genuine and reasonably entertained belief that its acts would not cause the artist to be in breach of the master agreement.

667    In my view and in any event, MBL has made out the relevant defence. Both Ms Hanlan and Mr McDonald each reasonably held a bona fide belief that the artist was entitled to sell the replica to MBL for use in its campaign, and that such a sale and use would not result in the artist breaching her contract with State Street (US). Further, they had a reasonable and bona fide belief that the artist was entitled to participate in the launch event without placing her in breach of the master agreement. Further, Ms Sheehan also held such a reasonable and bona fide belief. And she was acting perfectly reasonably in informing herself based upon what she was told by Ms Hanlan and Mr McDonald. Let me elaborate a little.

668    First, at the time of signing the art agreement MBL had only one source of information about the contract between State Street (US) and the artist. That source was the artist/Ms Wolff. And from an informed legal perspective it was Ms Wolff alone, who had approved the final draft of the art agreement for signing by her client.

669    MBL had known from the start of negotiations in June 2018 that Ms Wolff had detailed knowledge and understanding of the master agreement. She had negotiated the master agreement with State Street (US). This was significant. As Mr McDonald said in an exchange in cross-examination:

[Counsel]: And your reliance upon Ms Wolff, as I understand it, was based upon (1) you had looked her up on the internet; (2) – and seen her credentials; (2) [sic] you had had a conversation which the material matters pertaining to this matter ran for about three to four minutes; and (3) from the email traffic that you had with her or seen from her regarding the amendments to the agreement; that’s correct?

Mr McDonald: That is correct, but there’s an additional one, and that additional one being that I was also aware from 22 June – from when we were first given the brief that Ms Wolff was also the lawyer who had negotiated the agreement with State Street.

670    Given Ms Wolff’s role in relation to negotiating the master agreement, that source of information and her views about what MBL could or could not do were credible. MBL had no plausible reason to doubt them.

671    Second, the fact that Mr McDonald did not request a copy of the master agreement, which he considered would have been unusual in such a negotiation and likely refused, or ask further questions that State Street (US) now suggest should have been asked, does not detract from the reasonableness of what Mr McDonald in fact did, which was to seek assurances through the clarifications to the “no branding use” clause of the art agreement that MBL could use the replica for its campaign.

672    Third, MBL did not have clear indications from State Street (US) that to proceed with the launch event would cause the artist to breach the master agreement. Indeed, the letter of demand did not put MBL on notice that State Street (US) were alleging that the artist would breach the master agreement by appearing at the launch event. No such claim was made by State Street (US) in that letter or at any point prior to the launch event.

673    Now State Street (US) submitted that I should infer that MBL received advice from Simpsons in relation to the master agreement but has chosen not to disclose it. But I decline to draw such an inference. Mr McDonald and Ms Sheehan denied in cross-examination that any such advice was sought or received.

674    Further, it was reasonable for Mr McDonald and Ms Hanlan to assume that Ms Wolff’s professional obligations to act in the best interests of her own client would not lead Ms Wolff to offer the assurances that she did, including in her letter of 13 February 2019 (AEST), or encourage the launch event to go ahead in the face of a threat of breach of contract by State Street (US).

675    Given Ms Wolff’s clear knowledge and understanding of the master agreement, Mr McDonald and MBL had every reason to be comforted by her views about the master agreement.

676    In summary, in my view this defence has been made out by MBL and applies to all dimensions of State Street (US)’s tort claim concerning inducing breach of the master agreement.

(e)    Damage

677    State Street (US) has not put forward cogent evidence of even some damage necessary to ground the tort.

678    Moreover, its submissions in relation to alleged harm are based on the erroneous assumption that it has some exclusive ownership of the artwork. But when regard is had to the terms of the master agreement, it is apparent that the artist retained rights in relation to the artwork, including the right to distribute reproductions.

679    Further, for all of the reasons that State Street (US) has failed to establish any element of damage in relation to its passing off claim, it also fails in this context.

680    But I should note that the trial before me was conducted only on issues of liability and non-pecuniary relief. It is not necessary to descend further into the detail on damage or damages here.

ACL CLAIMS AND PASSING OFF

681    SSGA alleges that in the promotion or use of the replica, MBL made various representations that were false and engaged in conduct that was misleading or deceptive or likely to mislead or deceive. It also says that MBL engaged in the tort of passing off.

682    First, SSGA says that MBL represented to members of the public that the replica was:

(a)    the New York statue;

(b)    associated with SSGA or SSGA’s gender diversity and asset stewardship initiatives; and

(c)    marketed, promoted, sponsored, installed or displayed by or with the licence, approval or authority of SSGA.

683    Second, SSGA says that MBL represented to members of the public that MBL was:

(a)    associated with the New York statue;

(b)    associated with SSGA or SSGA’s gender diversity and asset stewardship initiatives and that MBL’s gender diversity initiatives were so associated; and

(c)    licensed by or associated with SSGA concerning the use of the replica.

684    Generally, MBL denies that it made such representations. Moreover, it says that none of the conduct complained of was misleading or deceptive or likely to mislead or deceive.

685    It says that SSGA has wrongly purported to equate the reputation in the New York statue with SSGA’s own Fearless Girl campaign or SSGA itself. But it says that any interest shown in the New York statue does not equate with an interest in and knowledge of SSGA and its Fearless Girl campaign. It says that in Australia, the reputation and message conveyed by the New York statue has existed independently of SSGA and that whilst some people in Australia might have known of the New York statue, very few people outside the US were likely to associate SSGA with it.

686    In any event, MBL says that distinguishing wording was used by it in the second invitation, the third invitation, the billboard in Federation Square, the wrap-around cover and the Stellar magazine article.

687    Wording was used such as:

The ‘Fearless Girl’ sculpture is a limited edition reproduction of the original ‘Fearless Girl’ sculpture in New York, created by Kristen Visbal.

688    And wording was used such as:

Maurice Blackburn, HESTA and Cbus are not in any way affiliated with, endorsed or licensed by State Street Global Advisors Trust Company, the commissioner of the original ‘Fearless Girl’ sculpture, or State Street Global Advisors Australia Ltd or their related entities, in relation to the display of the reproduction of the ‘Fearless Girl’ sculpture.

689    In summary, I would say now that the alleged representations were not made by MBL.

690    Indeed, what MBL represented is nicely encapsulated in its media release which was issued on 6 February 2019 in the following form:

FEARLESS GIRL to take a stand for equality in Australia

Maurice Blackburn and partners industry super funds HESTA and Cbus bring Iconic statue to Australia in the fight for equality and diversity

February 2019: She faced off against the Charging Bull on Wall Street and Fearless Girl is now coming to Australia to stand tall in Melbourne’s CBD as a globally recognised symbol of the fight for gender equality.

Ahead of International Women’s Day on 8th March, Fearless Girl will take her place in Federation Square.

Maurice Blackburn CEO Jacob Varghese said Fearless Girl will serve as a powerful reminder that Australia still has a long way to go in the fight for gender equality.

“We are proud to be bringing Fearless Girl to Australia, globally she has served as an inspiring force for change to deliver equality,” Mr Varghese said.

“Fearless Girl will be a reminder to Australian workplaces that we must keep up the fight for gender equality - delivering equality changes our workplaces for the better and we must act on this now for future generations of women, including by tackling entrenched pay gaps, increasing the number of women in leadership positions and providing flexible work environments.”

HESTA CEO Debby Blakey said Fearless Girl is a celebration of the spirit of women who have inspired and lead change and of the enormous potential still to be realised from achieving genuine equality.

“Having the iconic Fearless Girl in Australia is a wonderful permanent reminder of the daring and courageous pursuit of change that’s needed if we’re to achieve equality and equal pay for the women of Australia now and for generations to come,” Ms Blakey said.

Cbus CEO David Atkin said he hopes Australia’s boardrooms embrace Fearless Girl’s daring and confident spirit.

“While standing silent, and at just a little taller than a metre, Fearless Girl’s call for change has been heard right across the world.

“With all eyes on corporate Australia at the moment, it is the perfect time for her voice to be finding a permanent home in Australia,” Mr Atkin said.

The Fearless Girl statue is one of just four in the world with the iconic statue also in Oslo, New York and South Africa with further statues announced.

- ENDS -

About HESTA

HESTA is a $47 billion industry super fund dedicated to health and community services. More than 80% of their over 860,000 members are women. HESTA is a tireless advocate for gender equality and to close the gender pay gap. HESTA was the first major Australian superannuation fund to publically commit to voting against the re-appointment of directors at companies with all male boards. HESTA also directly engages with ASX 200 companies seeking they set numerical targets with timeframes for women in senior leadership. HESTA is recognised as a WGEA Employer of Choice for Gender Equality.

About Cbus

Cbus is Australia’s leading building and construction industry super fund with more than 780,000 members and over $48 billion in funds under management (as at 30 September 2018). Our members include workers and retirees, their families and employers. As a significant investor in the Australian economy Cbus is a strong advocate of corporate responsibility and a leader in responsible investment. Cbus has been recognized as a WGEA Employer of Choice for Gender Equality.

About Maurice Blackburn Lawyers

Maurice Blackburn Lawyers is Australia’s leading social justice law firm and is committed to the unwavering belief that the law should serve everyone, not just those who can afford it. Maurice Blackburn remains deeply committed to promoting gender equality within the broader Australian community as well as within the firm, including announcing in 2018 that in its Board would be made up of more than 50 per cent female representation in what is believed to be an Australian first for a national law firm. Maurice Blackburn is recognized as a WGEA Employer of Choice for Gender Equality.

(my emphasis)

691    The “Q & A talking points” circulated at the time as possible responses to media and other enquiries were also consistent with the themes of the media release.

692    Now if one considers the media release for a moment, which in my view typifies the MBL campaign and MBL’s representational conduct generally, the following is readily apparent.

693    First, it was apparent that the replica was not being represented as the New York statue itself. So, the statement “The Fearless Girl statue is one of just four…”. In other words, what was being referred to was the three-dimensional form of Fearless Girl rather than the New York statue literally.

694    Second, the MBL campaign was about “the fight for gender equality”, “inspiring force for change to deliver equality”, “a reminder to Australian workplaces that we must keep up the fight for gender equality” and “equality and equal pay”. Now true it is that there were phrases such as “increasing the number of women in leadership positions”. But such phrases were generally across all levels of the workforce and across all sectors. Further, although there is a reference to a statement of Cbus’ CEO about hoping “Australia’s boardrooms embrace Fearless Girl’s daring and confident spirit”, this was not a statement about or confined to the finance industry. Further, it was not a statement confined to the number of female directors on boards.

695    Third, the biographical details concerning HESTA and Cbus were consistent with the breadth of the MBL campaign as so represented. But admittedly, the description for HESTA does include a reference to its position concerning “all male boards”. Further, in the details for MBL there is a reference to board composition.

696    Fourth, there is no reference to any association with SSGA. SSGA’s position, whether as the commissioner of the New York statue or otherwise, was irrelevant to the MBL campaign or what was being represented by the press release or later conduct of MBL, HESTA or Cbus. Clearly the MBL campaign was associating itself with the Fearless Girl concept and image. But its campaign could hardly be described as associating MBL or the replica with SSGA or the commissioner of the New York statue.

697    Further, the MBL campaign was not about the finance or investment industry as such. And nor was it generally about gender diversity at board level. But its breadth did encompass such matters, as is indicated by a statement in the “Q & A talking points” (“From the gender pay gap to equal representation between men and women at board level and in senior positions in corporate Australia, there is still has [sic] a long way to go in the fight for equality”).

698    Now SSGA says that a key message of the MBL campaign was equal representation between men and women at board level and in senior positions within organisations. This is an overstatement, but admittedly part of the focus of women in leadership positions was on equal representation between men and woman at board level. But to so conclude takes SSGA nowhere on its claims.

699    Further, SSGA says that although proposed stunts mentioned by MBL’s consultants may not have eventuated, it is of significance that the consultants mentioned potentially targeting publicly listed companies with no female board representation. Further, SSGA points out that a draft of the suggested topics and questions for the panel discussion at the launch event dated 12 February 2019 prepared by OGB included an example question about the number of woman in company leadership positions. Now this may be correct. But it gives a distorted picture of the thrust of the MBL campaign and what MBL was representing, and in any event does not establish SSGA’s claims.

700    Further, SSGA says that the speeches given and questions asked at the launch event included statements regarding the importance of having boards with gender diversity and women in corporate leadership positions. But again, that may be true. But in context none of this makes out SSGA’s case.

701    Generally speaking, in my view a fair and proportionate characterisation of the MBL campaign is that it was not principally focused on equal representation at board level or about the finance industry. Clearly little snippets and selective aspects of the evidence identified by SSGA indicate that there was some reference to such matters. But such bits and pieces, which in many cases have been taken out of context, do not in any event provide a foundation for SSGA’s principal allegations and claims.

702    Further, I should make another point at the outset concerning SSGA’s reference to HESTA and Cbus being part of the finance industry. It ought not to be forgotten that HESTA and Cbus manage and promote superannuation funds for working women as part of their retirement planning and their financial security. So in the present context, HESTA’s and Cbus’ principal interest was not the narrower and more rarified level of being concerned about gender diversity in corporate governance including at board level. Rather they were interested in broader gender diversity issues and equal pay at all levels. Further, their broader focus was not just about players or participants in the finance industry, although of course their operations involved providing financial services and financial products. Their broader focus was on working women at all levels and across all industries.

703    Let me now turn to the statutory framework and the applicable principles.

704    Section 18(1) of the Australian Consumer Law (ACL) provides that:

A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.

705    Section 29(1) of the ACL states:

A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:

(a)    make a false or misleading representation that goods are of a particular standard, quality, value, grade, composition, style or model or have had a particular history or particular previous use; or

(g)    make a false or misleading representation that goods or services have sponsorship, approval …; or

(h)    make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation …

706    The principles for determining whether conduct contravenes s 18 are well known. I set them out in Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd (2016) 118 IPR 239 at [259] to [277]. Similar principles govern the application of s 29.

707    It is appropriate to state a number of non-contentious principles applicable to the present case.

708    First, conduct will be likely to mislead or deceive if there is a real or not remote chance or possibility of misleading or deceiving. To assess this one looks at the potential practical consequences and effect of the conduct. And whether conduct is misleading or deceptive or likely to mislead or deceive is a question of fact, which must be determined having regard to all the relevant circumstances.

709    Second, there is no meaningful difference between the words and phrases “misleading or deceptive”, “mislead or deceive” or “false or misleading”.

710    Third, where the issue is the effect of conduct on a class of persons (rather than identified individuals to whom a particular misrepresentation has been made or particular conduct directed), the effect of the conduct or representations upon ordinary or reasonable members of that class must be considered (Campomar Sociedad, Limitada v Nike International Ltd (2000) 202 CLR 45 at [102] and [103]). This hypothetical construct avoids using the very ignorant or the very knowledgeable to assess effect or likely effect; it also avoids using those credited with habitual caution or exceptional carelessness; it also avoids considering the assumptions of persons which are extreme or fanciful. I should note here that much the same standard is applied in a case of passing off in assessing whether a representation of the relevant kind was made and its likely effect on the potential purchaser.

711    Fourth, the objective characteristics that one attributes to ordinary or reasonable members of the relevant class may differ depending on the medium for communication being considered. There is scope for diversity of response both within the same medium and across different media.

712    Fifth, for the purposes of s 18, one must identify the relevant conduct and then consider whether that conduct, considered as a whole and in context, is misleading or deceptive or likely to mislead or deceive. Such conduct is not to be pigeon-holed into the framework or language of representation (cf the language of s 29).

713    Sixth, conduct is misleading or deceptive or likely to mislead or deceive if it has the tendency to lead into error. But conduct causing confusion or wonderment is not necessarily co-extensive with misleading or deceptive conduct. Mere confusion or wonderment will not establish misleading or deceptive conduct. Further, there may be evidence of initial confusion, but where such confusion was transient and did not result in any person seeking to commence negotiations or invite approaches, such a temporary and commercially irrelevant error would fall short of amounting to misleading or deceptive conduct.

714    Seventh, for the purposes of s 18, the words “likely to mislead or deceive” demonstrate that it is not necessary to show actual deception. Relatedly, it is not necessary to adduce evidence from persons to show that they were actually misled or deceived.

715    Eighth, there must be a sufficient nexus between the impugned conduct or apprehended conduct and the customer’s misconception or deception. Subject to one qualification, the error or misconception must result from the relevant respondent’s conduct and not from other circumstances for which that respondent was not responsible. But conduct that exploits or feeds into and thereby reinforces the pre-existing mistaken views of members of the relevant class may be misleading or deceptive or likely to mislead or deceive.

716    Ninth, conduct that is merely transitory or ephemeral where any likely misleading impression is likely to be readily or quickly dispelled or corrected does not constitute conduct that would infringe s 18.

717    Tenth, in determining whether a contravention of s 18 has occurred, the reactions of the hypothetical individual within the class are considered. Under the Campomar test, the hypothetical individual is a reasonable or ordinary member of the class.

718    Let me linger on Campomar for the moment and the debate concerning the “not insignificant number” formulation. Let me also set out my starting point in Flexopack (at [270]):

[I]n determining whether a contravention of s 18 has occurred, the focus of the inquiry is on whether a not insignificant number within the class have been misled or deceived or are likely to have been misled or deceived by the respondent’s conduct. There has been some debate about the meaning of “a not insignificant number”. The Campomar formulation looks at the issue in a normative sense. The reactions of the hypothetical individual within the class are considered. The hypothetical individual is a reasonable or ordinary member of the class. Does satisfying the Campomar formulation satisfy the “not insignificant number” requirement? I am inclined to the view that if, applying the Campomar test, reasonable members of the class would be likely to be misled, then such a finding carries with it that a significant proportion of the class would be likely to be misled. But if I am wrong and that a finding of a “not insignificant number” of members of the class being likely to be misled is an additional requirement that needs to be satisfied, then I would make that finding in the present case. For a discussion of these issues, see Greenwood J’s analysis in Peter Bodum A/S v DKSH Australia Pty Ltd (ACN 005 059 307) (2011) 280 ALR 639; 92 IPR 222; [2011] FCAFC 98 at [206]–[210] and National Exchange Pty Ltd v Australian Securities and Investments Commission (2004) 61 IPR 420; 49 ACSR 369; [2004] FCAFC 90 at [70] and [71] per Jacobson and Bennett JJ.

719    Recently, Wigney, O’Bryan and Jackson JJ in their dicta in Australian Competition and Consumer Commission v TPG Internet Pty Ltd (2020) 381 ALR 507 at [23] and [24] criticised the “not insignificant number” formulation including my own use thereof, whether as an alternative or an addition. They said that such a test is “at best, superfluous to the principles stated by the High Court in Puxu, Campomar and Google Inc”. And they said that such a test is “at worst, an erroneous gloss on the statutory provision”. They concluded (at [24]):

Consistently with our view that the “significant number” test is at best superfluous and at worst an erroneous and distracting gloss, we consider it appropriate to approach the ACCC’s arguments on the basis of the principles stated by the High Court in Puxu, Campomar and Google Inc and to ignore the “significant number” test. Nevertheless, we note that our conclusion would not change even if we were to apply the “significant number” test.

720    But as they said, “[n]o substantive argument was directed to the correctness of that test by the ACCC and our decision in this appeal does not turn upon it” (at [23]).

721    How should I proceed in circumstances where I consider there to be at least three binding Full Court authorities prior to TPG, and importantly after Campomar, that justify me in applying such a test? Such Full Court authority prior to TPG did not accept the suggestion that Campomar displaced such a test. Three examples will suffice.

722    In National Exchange Pty Ltd v Australian Securities and Investments Commission (2004) 49 ACSR 369, Jacobson and Bennett JJ said (at [67] to [71]):

Mr Karkar submitted that the primary judge erred in failing to consider whether a “significant proportion” of shareholders would have been likely to have been misled. He relied on the use of those words by Wilcox J in 10th Cantanae Pty Ltd v Shoshana Pty Ltd (1988) 79 ALR 299 (10th Cantanae) at 302. Mr Karkar also pointed to a possible inconsistency between the remarks of Deane and Fitzgerald JJ in Taco Co of Australia Inc v Taco Bell Pty Ltd (1982) 42 ALR 177 (Taco Bell) and the test of the ordinary or reasonable shareholder stated by the High Court in [Campomar]. In a well-known passage in Taco Bell at 202, their Honours referred to the need to consider the question of whether conduct is misleading by reference to all those who come within the class including the astute and the gullible.

In [Campomar] at [102] and [103] their Honours referred to the attribution of characteristics to the ordinary or reasonable members of the class and to the need to isolate the hypothetical member of the class who has those characteristics. The attribution is to be objective in order to allow for the wide range of persons who would, in fact, make up the class. It is also to allow for unreasonable reactions of members at either end of the spectrum which makes up the class. We see no difference between this approach and that which was contemplated by Deane and Fitzgerald JJ in Taco Bell.

Indeed, the same view seems to have been taken by Gibbs CJ in Puxu at CLR 199; ALR 6 as follows:

Although it is true, as has often been said, that ordinarily a class of consumers may include the inexperienced as well as the experienced, and the gullible as well as the astute, the section must in my opinion by regarded as contemplating the effect of the conduct on reasonable members of the class.

Nor in our opinion is there any distinction between the words used by Wilcox J and the approach stated by the High Court in [Campomar]. In determining the effect of conduct on the reasonable members of the class, it is necessary for the court to consider objectively, as a question of fact, whether those persons have been, or would be likely to be, misled. A finding that reasonable members of the class would be likely to be misled carries with it the determination that a significant proportion of shareholders would be misled.

In any event, 10th Cantanae was a decision of a Full Court. Pincus J observed (at 309) that it was not sufficient that “some readers” were affected. Gummow J (in dissent, but not as to the test) referred (at 314–15) to the need to prove that a substantial proportion of persons was misled, in contrast to a need to establish that almost all purchasers were of a particular view. Gummow J also referred (at 315) to “the usual manner in which ordinary people behave”. Accordingly, it is apparent that the test stated in 10th Cantanae is not inconsistent with [Campomar]. We disagree with a suggestion to the contrary by Finkelstein J in Domain Names at [25]–[26].

723    Further, Dowsett J said (at [23]):

I consider that this approach misconceives the respective effects of Taco Bell and 10th Cantanae. In my view, the relevant passages in both cases merely express, in different forms, the test propound by the High Court in [Campomar]. The way in which such a test is propounded in a particular case may, to some extent, reflect the way in which the applicant has sought to satisfy it. An applicant may seek to prove misleading effect by showing that many representees were misled. To discharge the relevant onus, it may well be necessary to show that a significant proportion was misled. On the other hand, there will be cases, such as the present case, where there is little, or perhaps no evidence that any person was actually misled. Where a regulatory authority seeks to prevent conduct in breach of a provision such as s 52 of the TP Act or s 1041H(1) of the Act, this will often be the case. Such an applicant will rely upon the terms of the representation and the circumstances in which it was, or is to be made, looking to the notional representative class member as the basis for assessing the likely effect of the conduct in question. To speak of a reasonable member of a class necessarily implies that one is speaking of a significant proportion of that class. It is impossible to postulate a situation in which the reasonable member of a class is not representative of such a proportion. Thus the approach adopted by Wilcox J in 10th Cantanae is simply an alternative way of expressing the test now clearly prescribed in [Campomar].

724    Now three points can be made. First, there is non-acceptance of the trial judge, Finkelstein J’s doubts. Second, what is controlling is what Jacobson and Bennett JJ said. Third, the relevant formulation concerning “significant proportion of that class” was not seen as inconsistent with or superfluous to High Court authority such as Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 and Campomar. And interestingly, but admittedly fleetingly, Campomar refers to 10th Cantanae Pty Ltd v Shoshana Pty Ltd (1988) 79 ALR 299 in footnote 145, which references Gummow J in 10th Cantanae at 324 to 325 (324 incorporates by reference aspects of 314 and 315), without any comment let alone criticism of 10th Cantanae.

725    Further, in Peter Bodum A/S v DKSH Australia Pty Ltd (2011) 280 ALR 639, Greenwood J, with whom Tracey J agreed, said (at [206]):

Some debate has arisen in the authorities about whether the test adopted in Campomar by the High Court is inconsistent with the notion that s 52 looks in a normative sense to whether a not insignificant number of persons have been misled or are likely to be misled by the impugned conduct. In Campomar, as already indicated, the High Court observed that s 52 must be regarded as contemplating the effect of the impugned conduct on reasonable members of the class of prospective buyers and the question is answered by considering the reactions of the hypothetical individual within the class excluding assumptions which might be regarded as extreme or fanciful. The hypothetical individual is a reasonable or ordinary member of the class and once the responses of the notional hypothetical individual have been determined, they are determined for the class, that is, the whole class. Therefore, the Campomar question might be (in the context of conduct said to involve representations to a section of the public at large such as prospective retail buyers of a product sold by a respondent rival trader) whether the class, as a class, has been misled or deceived or is likely to be misled or deceived by the conduct rather than whether a not insignificant number of persons in the class, in fact or by inference, have been misled or are likely to be misled. The reference to a “not insignificant number of persons” in the formulation of the test in Full Court authorities of this Court, is taken to be a reference to a not insignificant number of reasonable or ordinary persons in the class. If a not insignificant number of such persons would be misled or deceived by the impugned conduct, s 52 is contravened. That may be a test that asks a different question from whether the class as a class is misled by reference to the hypothetical notional reasonable member of the class.

726    Greenwood J (at [207]) then set out some of the passages in the Full Court in National Exchange of Jacobson and Bennett JJ that I have set out, and then a passage from Dowsett J. It would seem that he also considered what was said by Jacobson and Bennett JJ to be controlling. Then he said at (at [209]):

In the absence of a decision of the High Court expressly concluding that the proper approach to the construction of s 52 does not involve normative considerations of whether a not insignificant number of persons within the group would be misled by the impugned conduct, it seems to me appropriate to apply the test of whether a not insignificant number of persons within the relevant section of the public would be misled or be likely to be misled by reason of the impugned conduct.

727    Further, in Hansen Beverage Company v Bickfords (Australia) Pty Ltd (2008) 171 FCR 579, both Tamberlin J (at [46] and [47]) and Siopis J (at [66] to [72]) applied the “not insignificant number” or “significant number” test.

728    As far as I am aware, until the dicta in TPG there has been no Full Court authority or High Court authority which casts doubt upon the authority of what was said by Jacobson and Bennett JJ in National Exchange, Greenwood J (supported by Tracey J) in Peter Bodum and Tamberlin and Siopis JJ in Hansen Beverage. Now in TPG it was said that such cases “did not resolve the question whether it was a different and additional test to the principles stated by the High Court” (at [23(d)]). That is true. But what such cases do resolve is, first, that it is not a test which is inconsistent with or superfluous to the principles stated by the High Court in Campomar and Puxu for that matter, second, that to apply it is not to put an inappropriate gloss on the statutory provisions and, third, that such a test is not a symptom of tort law infection.

729    Let me say something about glossing. My reading of Full Court authority prior to TPG is that the “not insignificant number” test is not being used to rewrite or gloss the words “likely to mislead or deceive”. Rather, it is a formulation of application of the statutory words. So, taking such words, which are of broad amplitude and enshrine the normative standard to be applied, the cases that I have referred to, which include Campomar itself, have been all about how such statutory words are to be applied and established in different types of circumstances. So in their application, different formulations have been used, the satisfaction of which has been found to have met the statutory requirement of “likely to mislead or deceive”. The question then is whether the Campomar formulation is the only application test that should be used where conduct is directed towards the public or a class thereof rather than identified individuals. In other words, is it both a necessary and sufficient test in that context? Or is it a necessary application test but not sufficient, say, in passing off scenario cases? I do not consider, with respect to TPG, that Campomar defined away the second possibility.

730    Let me say something more general about the “not insignificant number” formulation in the context of passing off cases, which is my context and was not the context of TPG. And recall that one is looking at characterising conduct as “likely to mislead or deceive”. One is not looking at causation. And one is not looking at the actual reactions of consumers or others to that conduct.

731    Now although this formulation’s genesis was in cases discussing the tort of passing off, judges applying it in the old s 52 context were not making the mistake of applying common law tort concepts to the statutory provision. Rather, they were seeking to solve the problem of applying very broad statutory language “likely to mislead or deceive” to a context which was not straight forward. What do I mean?

732    In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 380 and 381, French J explained:

On the Trade Practices Act claim, his Honour adopted what may be in some circumstances a different test for the extent of ConAgra’s product reputation necessary to show misleading or deceptive conduct on the part of McCain. Provided ConAgra could show on the balance of probabilities that “a not insignificant number” of persons knew of the ConAgra product, then it should be entitled to succeed. His Honour said:

“If the number of persons with the necessary knowledge is insignificant, then a fortiori the conduct complained of will not be able to be characterised as conduct that is misleading or deceptive. Once it passes, however, the threshold of insignificance, then there is much to be said for the view that the conduct in question has become misleading.”

But accepting the possibility that the threshold of requisite reputation under the Act is lower than that required to support a claim in passing off, he did not think that ConAgra had satisfied the onus of showing that the number of persons for whom the name “Healthy Choice” and the package design would have the necessary secondary meaning was other than insignificant.

The nature of the question to be asked about McCain’s conduct for the purposes of s 52, Trade Practices Act is to be borne in mind in considering the correctness of the approach taken by his Honour. The question is one of characterisation of the conduct, not of the reactions of consumers or others to that conduct. So where some express representation is made and that representation is demonstrably false, it is not usually necessary to go beyond that finding in order to conclude that it is misleading or deceptive. The case of an obvious puff might be taken as an exception. Where conduct depends upon context or surrounding circumstances to convey a particular meaning, then those factors must be taken into account but only as a way of characterising the conduct. Where the name and get-up of a product are in issue, the question for the purposes of s 52 is whether they are misleading or deceptive in the circumstances. The fact that some members of the relevant public may be aware of a similar product in another country does not affect the characterisation of the conduct if that number is small. The word “insignificant” was used by his Honour to identify the threshold of public awareness below which such conduct is not misleading for the purposes of the section. That word is normative but not for that reason inappropriate.

Attention must be paid to the policy of the relevant provision which, as the heading to Pt V and many of its provisions indicate, is one of consumer protection. If the similarity complained of is commercially irrelevant having regard to the number of people who know of it, then it can be concluded that the use of the name and/or get-up complained of is not misleading or deceptive. That is essentially the kind of evaluation which underpinned his Honour’s finding in this case and on the primary facts that he found I am not persuaded that he erred in his approach.

733    What this is making plain is that in a passing off context, for the purposes of applying the statutory language one has to focus on the conduct considered in the circumstances. But in that context, the circumstances relevant to whether conduct is misleading or deceptive or likely to mislead or deceive include the level of public awareness of the applicant’s product or service or indeed awareness of the applicant itself. That really explains the “not insignificant number” genesis. What is the level of public awareness of such matters? If you don’t have such a threshold, the reasoning seems to proceed on the basis that you haven’t shown such an awareness. But if you have such a threshold, it is easy to see why one could conclude that in such a context, the rival’s conduct considered in such circumstances is likely to mislead or deceive. 10th Cantanae and ConAgra so proceed and were not seen as inconsistent with Puxu. Peter Bodum and Hansen Beverage also so proceed and were not seen as inconsistent with either Puxu or Campomar.

734    Let me put the point another way to explain what I mean.

735    Say the class is all members of the public in Victoria. Now consider two scenarios.

736    First, take a simple case being a newspaper advertisement representing internet speeds of a service provider. Say it is said that the advertisement is misleading or deceptive or likely to mislead or deceive by reason of an exaggeration or a half-truth. The Campomar formulation could rightly be seen as necessary and sufficient, albeit that the High Court has frequently said in many fields that its own words are no substitute for the statutory language and should not be the subject of overly fine interpretation as if they were inscribed in some inflexible Talmudic text. But the Campomar formulation works well in such a context by considering a hypothetical reasonable member of that class. That is all you need. Indeed, I quite agree with Finkelstein J in such a scenario. The “not insignificant number” formulation is superfluous. Indeed, satisfying the former would satisfy the latter. So far so good.

737    Second, now take the passing off scenario type case, but keep the class fixed as all members of the public in Victoria. Say the applicant and the respondent are rival boutique beer producers. Say the get-up for their products are similar and that they seek to target the workers, which I might add can be found at all echelons of Victorian society. Say that the respondent starts up its marketing and promotion throughout Victoria. And also assume, as one of the relevant circumstances, that the applicant’s product and get-up is not well-known. So, the question is whether the promotion by the respondent using similar get-up is misleading or deceptive or likely to mislead or deceive. Now TPG would suggest that you only need apply the Campomar formulation, namely, whether a reasonable or ordinary member of the public in Victoria would be likely to be misled or deceived by the respondent’s product and get-up. But that would be a hollow enquiry. And it would be divorced from part of the circumstances. What you also need to factor in is the public’s awareness of the applicant’s product and get-up; if you like, its reputation. That is part of the relevant circumstances within which to assess whether the respondent’s conduct falls foul of the statutory standard. Hence the injection of the “not insignificant number” formulation. It is to recognise that conduct is not likely to be misleading or deceptive unless a “not insignificant number” knows of the applicant’s reputation and therefore are likely to be misled or deceived by the respondent’s use of its rival product and get-up. So the potential effect of the respondent’s rival get-up on such a “not insignificant number” can be seen as driving the analysis. Put another way, if only an insignificant number of the public in Victoria know of the applicant’s product and get-up, the use by the respondent of rival get-up is unlikely to mislead or deceive members of the public in Victoria into thinking that the respondent’s product is associated with the applicant’s product. In other words, where reputation as a question of fact (not as a legal element for the statutory claim) is in issue, it is not sufficient to simply ask without more, in my example, what would be the likely reaction of a reasonable or ordinary member of the public when exposed to the respondent’s conduct, being the promotion of its product and get-up. You would have left out an important part of the equation. And the obvious response would be: well it all depends upon what they knew or likely knew of the applicant’s product or get-up. That is why the proxy “not insignificant number” formulation is being used. It can be seen as creating a practical floor to address the factually relevant circumstances of reputation. Admittedly though, it is not conceptually pure. But with respect to TPG, it is nevertheless a useful proxy according to prior and binding Full Court authority.

738    Well then if this is all good, why was this not discussed in Campomar? After all, it was a passing off case. That is a good question to ask oneself. And with respect, the answer to it is provided by the specific question that the High Court was addressing, which took the reputation of the suing party, Nike, as a given in that case; of course, it is not a given in my case.

739    The Campomar formulation appears in the section headed “Causation and erroneous assumption”. It was said (at [101]):

The other classes of case which their Honours had in mind include those of actual or threatened conduct involving representations to the public at large or to a section thereof, such as prospective retail purchasers of a product the respondent markets or proposes to market. Here, the issue with respect to the sufficiency of the nexus between the conduct or the apprehended conduct and the misleading or deception or likely misleading or deception of prospective purchasers is to be approached at a level of abstraction not present where the case is one involving an express untrue representation allegedly made only to identified individuals.

740    And it was said (at [103]):

Where the persons in question are not identified individuals to whom a particular misrepresentation has been made or from whom a relevant fact, circumstance or proposal was withheld, but are members of a class to which the conduct in question was directed in a general sense, it is necessary to isolate by some criterion a representative member of that class. The inquiry thus is to be made with respect to this hypothetical individual why the misconception complained has arisen or is likely to arise if no injunctive relief be granted. In formulating this inquiry, the courts have had regard to what appears to be the outer limits of the purpose and scope of the statutory norm of conduct fixed by s 52. Thus, in Puxu, Gibbs CJ observed that conduct not intended to mislead or deceive and which was engaged in “honestly and reasonably” might nevertheless contravene s 52. Having regard to these “heavy burdens” which the statute created, his Honour concluded that, where the effect of conduct on a class of persons, such as consumers, was in issue, the section must be “regarded as contemplating the effect of the conduct on reasonable members of the class”.

741    But in this context, Nike was suing Campomar and the case proceeded on the basis that Nike (the applicant) had a world wide reputation including in Australia and that Campomar (the rival) had no reputation in Australia. As Sheppard J said at first instance (Nike International Ltd v Campomar Socieded Limitada (1996) 35 IPR 385 at 408):

The documents to which I have referred and other documents in the case, particularly the letters written in 1985 and 1986, reinforce me in my conclusion that Mr Ruiz had for a number of years perceived the advantage his organisation could expect to gain by the worldwide marketing of its products under the Nike name in conjunction with, or with the approval of, Nike International or one or more of its associated companies. Campomar had no reputation in Australia when its marketing activities were commenced in 1993. Nike International Ltd had a worldwide reputation. By 1993 its products had become very well known in Australia.

742    So in the High Court, Nike’s reputation was a given. The level of public awareness of Nike and its products was notorious. Clearly a “not insignificant number” of members of the public were well aware of Nike and its products’ reputation. So, on this aspect the only issue that the Court had to address was the erroneous assumption question. And it was for that purpose that a criterion for the hypothetical member of the relevant class was being stipulated, which then backed out certain erroneous assumptions. That was what the Court was addressing at [105] when it said:

Nevertheless, in an assessment of the reactions or likely reactions of the “ordinary” or “reasonable” members of the class of prospective purchasers of a mass-marketed product for general use, such as athletic sportswear or perfumery products, the court may well decline to regard as controlling the application of s 52 those assumptions by persons whose reactions are extreme or fanciful. For example, the evidence of one witness in the present case, a pharmacist, was that he assumed that “Australian brand name laws would have restricted anybody else from putting the NIKE name on a product other than that endorsed by the [Nike sportswear company]”. Further, the assumption made by this witness extended to the marketing of pet food and toilet cleaner. Such assumptions were not only erroneous but extreme and fanciful. They would not be attributed to the “ordinary” or “reasonable” members of the classes of prospective purchasers of pet food and toilet cleaners. The initial question which must be determined is whether the misconceptions, or deceptions, alleged to arise or to be likely to arise are properly to be attributed to the ordinary or reasonable members of the classes of prospective purchasers.

743    But where the applicant’s reputation in Australia is in issue and is one of the circumstances to consider, it seems to me that the “not insignificant number” formulation may have relevance because it is a proxy relevant to the applicant’s reputation, which is part of the matrix on which you are posing the question of whether the respondent’s conduct is likely to mislead or deceive. You are not posing that question devoid from the applicant’s reputation. But as I say, in Campomar that was a given. And there was no need to consider cases such as ConAgra and 10th Cantanae on such matters.

744    And as so understood, one is not applying tort concepts to the statutory framework. Rather one is identifying the setting of the circumstances. ConAgra, 10th Cantanae, Peter Bodum and Hansen Beverage make this plain. Contrastingly, neither TPG nor Trivago N.V. v Australian Competition and Consumer Commission (2020) 384 ALR 496 involved the passing off scenario.

745    Now if only the dicta in TPG was to be matched against National Exchange (albeit not a passing off case), Peter Bodum and Hansen Beverage, which post-date Campomar, I would not have the option not to apply the earlier Full Court authority. But post TPG, Trivago would now seem to have enshrined the dicta from TPG in a manner that now binds me, although I am a little unclear as to what debate took place in Trivago (see at [192], [193] and [206] per Middleton, McKerracher and Jackson JJ). But now given Trivago, I do not think that I am entitled to draw any comfort from the even more recent Hashtag Burgers Pty Ltd v In-N-Out Burgers, Inc [2020] FCAFC 235 at [119] per Nicholas, Yates and Burley JJ where the matter was not debated. Further, it also would seem to follow that the old debates concerning the “not insignificant number” test versus the “substantial number of persons” test discussed in Optical 88 Ltd v Optical 88 Pty Ltd (No 2) (2010) 275 ALR 526 at [335] to [342] by Yates J are now redundant.

746    In all the circumstances, I will treat Trivago as binding and superseding earlier Full Court authority. So, I will apply Campomar without any “not insignificant number” test. But so applying Campomar, SSGA fails in its claims. But if I were permitted to and did apply a “not insignificant number” test, whether as an alternative or an addition, SSGA still fails.

747    Let me conclude this section by saying something about the tort of passing off. For present purposes I repeat what I said in Flexopack at [278] to [282].

748    In summary, the elements of this tort are:

(a)    first, the existence of a reputation, at the time of the respondent’s impugned conduct, in the mind of the relevant purchasing class for the applicant’s goods or services;

(b)    second, a misrepresentation by the respondent, whether intentional or inadvertent, that its goods or services are those of the applicant; and

(c)    third, that the applicant has suffered or is likely to suffer damage.

749    More generally, on the question of reputation Gummow J said in ConAgra at 372:

In my view, where the plaintiff, by reason of business operations conducted outside the jurisdiction, has acquired a reputation with a substantial number of persons who would be potential customers were it to commence business within the jurisdiction, the plaintiff has in a real sense a commercial position or advantage which it may turn to account. Its position may be compared with that of a plaintiff who formerly conducted business within the jurisdiction and has retained a reputation among its erstwhile customers, and with that of a plaintiff with a reputation which arises from its trade in the jurisdiction, but extends to goods or services which are not presently marketed by him. If the defendant moves to annex to itself the benefit of such a reputation by attracting custom under false colours, then the defendant diminishes the business advantage of the plaintiff flowing to it from the existence of his reputation.

This is so whether the plaintiff is a party which may expand into a new field of business or resume a former business conducted in the jurisdiction, or a party which may enter the jurisdiction to establish a business for the first time. The immediacy and intensity of the intention of the plaintiff to commence or resume business is, in my view, a question going not so much to the invasion of the plaintiff's rights as to the imminence of a threat sufficient to justify an injunction.

750    Further, the required reputation is something more than a reputation among a small number of persons; there must be “a substantial number of persons who are aware of the plaintiff’s product” (ConAgra at 346 per Lockhart J).

751    Further, a name or word does not have to be associated with goods manufactured by the trader. It can extend to fictional characters associated with a business. And given that character merchandising has been recognised as attracting the protection of the law, it may be sufficient that a fictional character has acquired a reputation and goodwill capable of being damaged by passing off.

752    Further, it may be unnecessary to establish that the relevant purchasing class knew the precise identity of the applicants to establish the tort of passing off.

753    Let me now return to the ACL claims and discuss a threshold question, which I have found in favour of SSGA.

(a)    The “in trade or commerce” question

754    Was the relevant misleading or deceptive conduct or alleged representations “in trade or commerce” within the meaning of the statutory phrase? MBL submitted that I should answer that question in the negative. But I disagree.

755    In Concrete Constructions (NSW) Pty Ltd v Nelson (1990) 169 CLR 594, the joint reasons noted that there were two possible ways to interpret the phrase “in trade or commerce”, ultimately accepting that the words refer to “the central conception” of trade or commerce and not to the “immense field of activities” in which corporations may engage in the course of, or for all purposes of, carrying on some overall trading or commercial business. The joint reasons stated (at 603 and 604):

[I]t is plain that s.52 was not intended to extend to all conduct, regardless of its nature, in which a corporation might engage in the course of, or for the purposes of, its overall trading or commercial business. ... the reference to conduct “in trade or commerce” in s.52 can be construed as referring only to conduct which is itself an aspect or element of activities or transactions which, of their nature, bear a trading or commercial character.

756    Further, it was explained that:

Such conduct includes, of course, promotional activities in relation to, or for the purposes of, the supply of goods or services to actual or potential consumers, be they identified persons or merely an unidentifiable section of the public. In some areas, the dividing line between what is and what is not conduct “in trade or commerce” may be less clear and may require the identification of what imports a trading or commercial character to an activity which is not, without more, of that character.

757    So within that ambit, conduct “in trade or commerce” can include promotional activities in relation to, or for the purpose of, the supply of goods or services to actual or potential consumers, be they identified persons or merely an unidentifiable section of the public.

758    So, for example, the issuing of a promotional booklet by a law firm in order to promote its practice in medical malpractice claims has been held to have had such a trading character, where it was treated as part of the costs of “advertising, marketing and public relations” (Nixon v Slater & Gordon (2000) 175 ALR 15 at [27] to [29] per Merkel J).

759    Now MBL says that its activities in the present context were in the nature of political activities or promotion of public discourse of matters relating to gender equity and more particularly, equal pay for men and women. It says that it was not promoting legal services, but bringing its resources and standing including its brand to bear on an important political or social message with potential impact across the whole community. Further, it says that the importance and centrepiece of its social justice campaign was manifest.

760    But in my view MBL’s conduct in pursuit of the MBL campaign was in trade or commerce.

761    As SSGA rightly said, each of the campaign partners, MBL, HESTA and Cbus, were businesses. And the campaign was a comprehensive marketing campaign incorporating a “paid, earned and shared” media approach. This model ensured that the marketing campaign reached all channels of consumption, that exposure was maximised and that each element reinforced the others. As to the “paid” component, MBL and its campaign partners bought media coverage of the launch event and commissioned the wrap-around cover and the Stellar advertisement. As to the “earned” component, each of the campaign partners issued media releases to announce their sponsorship that provoked media coverage. Further, there was media coverage at the launch event, which included interviews with the artist. As to the “shared” component, each of the campaign partners promoted the launch event and their association with the replica on social media.

762    In my view, each of MBL and its campaign partners used the launch event to promote themselves by tying their name to that of Fearless Girl. This is evident from MBL’s press release and the direct social media posts made by MBL. And this is further reinforced by the fact that the invitations to the launch event and other advertising and promotional material associated with the MBL campaign, including the wrap-around cover and the Stellar advertisement, displayed the corporate logos of each campaign partner.

763    Further, there is little doubt that each of the campaign partners saw significant value to them in having their businesses and brands associated with the campaign.

764    I should set out some examples from the material in evidence which was drawn to my attention.

765    In an email on 12 November 2018 from Ms Pantelidis to Mr Robbie Campo of Cbus, copied to Ms Hanlan, Ms Pantelidis stated: “For your consideration I’ve attached an advertising/sponsorship media package that would require additional $ investment as part of the amplification of this event – although this is additional spend it also represents a ‘money can’t buy’ amplification strategy that will effectively promote and leverage your investment in Fearless Girl”. A similar email had been sent from Ms Hanlan to representatives of HESTA on 9 November 2018.

766    On 18 January 2019, in an internal HESTA email, Ms Sonia Sawtell-Rickson, HESTA’s Chief Investment Officer, stated: “This is amazing! The Fearless Girl was massive in finance when it was initially used in New York. Wow! This will give us strong brand build and will also be another great bow in our employee value proposition. Well done team!”.

767    Further, a draft version of the CEO management report dated 29 January 2019 which was prepared by Mr Varghese for the meeting of MBL’s board of directors on 5 February 2019 stated that “As part of a program of work to build brand awareness we are partnering with two industry super funds – HESTA and Cbus Super – to acquire an official replica of the Fearless Girl statue for Australia”. And in respect of the launch event, the draft stated that: “[t]he event, scheduled for 26 February pending confirmation from the Premier’s and the Lord Mayor’s offices, will be the centrepiece of a strong PR campaign to demonstrate Maurice Blackburn’s commitment to fighting gender inequality”. There is no final version in evidence.

768    Further, an internal Cbus email sent on 5 February 2019 attached a draft paper on Cbus’ involvement in the MBL campaign that stated: “It is recommended that the fund take advantage of the opportunity to leverage brand and media as a partner in this project” and “Fearless Girl was a successful marketing exercise for SSGA. It has significant impact by focussing attention on issues of corporate gender equality”. The purpose of the draft paper is a little unclear. It seems to have been circulated as “some background”. Further, the role and level of each of the internal Cbus email sender and receiver is also unclear.

769    Further, another internal Cbus email sent on 28 February 2019 setting out a draft response to a customer complaint about Cbus’ expenditure on the MBL campaign stated:

In terms of advertising, the small amount of money that Cbus has contributed to this project, has been leveraged into significant free media coverage over the past few weeks, which we anticipate continuing into the future.

Rest assured, we make business decisions of this nature based on the hard metric of how they improve the retirement outcomes of our members. In this case, the free media exposure and advertising resulting from the project has already exceeded expectations.

770    Generally, I agree with SSGA that to view the MBL campaign as purely altruistic in nature would be artificial and ignores the significant marketing value that MBL, HESTA and Cbus received as sponsors of the campaign.

771    Further, Ms Hanlan accepted that increasing the value of MBL’s brand was an aspect of the campaign. Indeed, an important consideration for Ms Hanlan was that the assets in the campaign contained MBL’s logo. She agreed that having a campaign based on Fearless Girl would provide good PR coverage. She agreed that campaign partners would obtain good brand recognition as a result of their involvement in the campaign. Further, she agreed that she was concerned to ensure that MBL was prominent in the campaign and she wanted the public to associate the campaign with MBL.

772    Further, News Corp, publisher of the Herald Sun newspaper, was chosen as the media partner because it had significant reach, both digitally and in a print format, in Victoria. Further, it was proposed that there be a regional roadshow and that clients of MBL would be invited. Further, an important aspect of the launch event itself was that clients of MBL were to be invited.

773    In my view, MBL’s campaign and its conduct sought to be impugned by SSGA was in trade and commerce. It had a purpose of promoting the business of MBL itself by attracting clients to its practice through its promotion of its commitment to fighting for pay equality in workplaces. Now of course I accept that MBL’s campaign involved public advocacy concerning an important social or political issue. But it was not just that.

774    Before I turn to the next question, it is convenient to say something more about the internal Cbus and HESTA documents. Much attention was paid by SSGA to what was said internally by representatives of Cbus and HESTA. But much of this focus did not take SSGA far except to establish the “in trade or commerce” point. Apart from the question of the tort of interference with contract, which required consideration of the state of mind of MBL, the subjective beliefs and internal considerations of MBL, Cbus and HESTA were otherwise of little significance to the other causes of action. The important factual questions for those other causes of action involved what they externally did, rather than their internal considerations, thoughts, processes and expectations. So, for example, even if it be assumed that Cbus and HESTA (or indeed MBL itself) perceived it to be advantageous to get involved as sponsors to leverage off the reputation of “Fearless Girl” or indeed, in the case of HESTA or Cbus, they perceived that there might have been reference to corporate leadership as part of the MBL campaign, that goes nowhere in terms of the specific ACL claims and passing off for example. For these claims, apart from the “in trade or commerce” point, it is their objective external conduct that is relevant.

775    Let me now turn to the question of the relevant class.

(b)    The relevant class

776    Who is the relevant class to whom the representations are said to have been made?

777    SSGA says that the relevant classes likely to be affected by the conduct were:

(a)    ordinary members of the Australian public; and

(b)    persons who had an interest in, or were participants in, the financial services sector in Australia.

778    SSGA says that the first class was composed of ordinary and reasonable members of the public who may have had access to the internet and been aware of electronic media and social media. SSGA also emphasised that such a class included the gullible, the unwary and the less well-educated.

779    SSGA says that the second class consisted of persons with an interest in, or participants in, the financial services sector in Australia, such as clients of SSGA. SSGA said that members of this class were likely to have become aware of the New York statue and its association with SSGA based on access to published articles, media and social media, particularly those in the financial press, and via promotions by SSGA to its institutional clients and prospective clients, communications via SSGA’s websites, presentations to researchers and other industry specialists, industry events, general marketing collateral used by SSGA and media coverage and recognition in the marketing and advertising industry. SSGA says that MBL was directing its campaign to persons who had an interest in, or participated in, the financial services sector in Australia. Further, it says that HESTA and Cbus were directing their involvement in the campaign to that sector.

780    But I agree with MBL that it was not directing its campaign to such a class of persons. On the contrary, its campaign was directed to the public at large, and not limited to any particular industry or level of seniority. Indeed, the media partner, News Corp, was apparently chosen by MBL because it would expose the campaign to a broader audience than Fairfax.

781    Further, the invitees to the launch event were people including clients who were connected with MBL, such as MBL’s union partners and other community groups and social groups who were or might be connected with gender equality and workplace discrimination issues.

782    Further, the focus of the MBL campaign was on the broader workforce, not those working in the financial services sector. And although HESTA and Cbus were in the financial services sector, there is little evidence that they were principally directing their involvement in the campaign to that sector. HESTA’s and Cbus’ members were predominantly drawn from the healthcare and construction industries respectively, not the financial services sector.

783    But in any event, the second class referred to by SSGA in its closing submissions was not an express part of SSGA’s pleaded case.

784    In summary, in my view the relevant class was “members of the public”. But I do accept that because MBL’s campaign was directed at the general public, members of the financial services sector could or did form part of the general public. The MBL campaign was widely publicised in the media and on social media, and members of the financial services sector would have been exposed to that coverage. Further, there were representatives of Accurate Financial Consultants, Acorn Capital, Australian Unity Trustees, the Healthcare Financial Management Association, Scale Investors and Tobacco Free Portfolios present at the launch event. So, although MBL’s campaign may have been targeted at a broader class, namely, the general public, it reached members of the financial services sector. But where any of this takes SSGA is another question. Let me move to the next main factual question.

(c)    Reputation in the New York statue and association with SSGA

785    Before dealing with whether the alleged representations were made by MBL, it is convenient at this point to say something in detail about reputation, a matter relevant to both the ACL and passing off claims.

786    SSGA says that the New York statue and the Fearless Girl campaign that had been conducted by State Street (US) was successful worldwide, being widely reported by global news agencies and extensively discussed on social media. I have discussed details of this earlier in my reasons.

787    Now it may be accepted that the New York statue generated a great deal of public interest and that the events surrounding its initial placement near Charging Bull and its subsequent relocation to the NYSE raised public awareness of the New York statue and produced public discourse about its meaning and relevance.

788    SSGA has contended that the association between SSGA, the Fearless Girl campaign and the New York statue was the subject of some media attention from Australian media outlets at or around the time that the New York statue was installed. But of course, that was in 2017, not 2019. I am interested in any reputation of SSGA’s association in early 2019 in Australia and, more specifically, in Victoria.

789    Now SSGA has said that there was significant reputation internationally, including in Australia, of the New York statue, the Fearless Girl campaign and its association with SSGA. It was said that the international reputation was akin to “spill-over reputation”, and in that context made reference to what was said in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379 at [81] by Greenwood, Jagot and Beach JJ, albeit discussing a trade mark question, that:

In 1992 the World Wide Web was in its infancy. There were no publicly available internet browsers. There was no Google, no Seek, no web browsing or the like. With the internet and travel both overseas and within Australia now ubiquitous in the lives of Australian people, the essential conceptual underpinning of [the appellant’s] case is unsound. [The appellant] accepted that, before [the appellant] conceived of the IR composite mark, [the respondent] had acquired a substantial reputation in its marks in Western Australia. [The appellant’s] case depended on the proposition that [the respondent’s] reputation in its marks did not extend outside Western Australia and [the appellant] would accept any condition or limitation not to use its marks in Western Australia. We accept that the [Trade Marks] Act permits a condition or limitation to this effect to be imposed. But the reality of modern life, with widespread use of the internet for advertising, job seeking, news gathering, entertainment, and social discourse and free and frequent movement of people across Australia for work, leisure, family and other purposes, necessarily impacts on both the acquisition of a reputation in a mark and the likelihood of the use of another mark being likely to deceive or confuse because of that reputation. Given current modes of communication and discourse and free and unfettered rights of travel within Australia, a substantial reputation in Western Australia in this national industry constituted a sufficient reputation in and across Australia for s 60(b) to be engaged. [The appellant’s] attempts to subdivide the nation into its component States and Territories, in the present context at least, could not succeed. Its approach resonates with sentimental notions of pre or early Federation train track gauge differences.

790    According to SSGA, the Fearless Girl campaign was an “innovative piece of modern marketing” that resonated with a global community, deploying both traditional media as well as highly shareable social media content. As SSGA would have it, its campaign went “viral”. SSGA said that a large part of the Fearless Girl campaign travelled through borderless online channels and established a significant spill-over reputation in Australia.

791    SSGA said that the widespread online content in relation to the New York statue, the Fearless Girl campaign and SSGA was also not ephemeral. And it was accessible and searchable to any person in Australia who was on the internet at the relevant time.

792    Further and more generally, SSGA contended that the evidence established that SSGA and the global reputation of the New York statue were closely intertwined. It pointed to the following matters.

793    First, the extensive media coverage of the Fearless Girl campaign referred to SSGA.

794    Second, following the unveiling of the New York statue, there was a 650% increase in @StateStreet Twitter handle impressions, a 90% increase in views of State Street (US)’s website and a 450% increase in views of the SHE fund page on State Street (US)’s website.

795    Third, when the New York statue was moved to the NYSE in December 2018, a giant banner with SSGA’s name emblazoned across it together with another banner with the words “REINVENTING INVESTING” were displayed on the front of the NYSE. The event and the image of the New York statue looking up at the SSGA banners were picked up and published by media organisations at the time.

796    Fourth, the New York statue had her own Wikipedia page that included statements referring to SSGA as being the commissioner of the statue.

797    Fifth, the various plaques with the New York statue at different times included SSGA’s name and logo.

798    Sixth, the success of the Fearless Girl campaign in various international marketing and advertising awards highlighted SSGA as the commissioner of the campaign.

799    Now I accept these points in terms of the facts.

800    Further, SSGA went on to say that it cannot be in doubt that the New York statue acquired a substantial reputation in Australia amongst members of the public. But of course the key question is the reputation in Australia of the association with SSGA.

801    Further, SSGA says that State Street (Australia) had actively promoted its connection with the Fearless Girl campaign under and by reference to the New York statue and the Fearless Girl trade mark in Australia.

802    I will return to these propositions in a moment.

803    Let me at this point say something about Mr Edwards’ evidence which is relevant to the question of reputation.

Mr Edwards’ evidence

804    Mr Edwards is now a freelance consultant and adviser on sculpture to public and private collections throughout Australia. Previously he was the Senior Curator of Sculpture at the National Gallery of Victoria and subsequently the Director of the Geelong Art Gallery, which position he held from 1999 to 2016. During his time at both the National Gallery of Victoria and the Geelong Art Gallery, he curated numerous retrospective and thematic exhibitions dealing with historical and contemporary sculpture. He was also responsible for major national and international surveys of contemporary sculpture presented under the auspices of the Australian Sculpture Triennial series, which included work by leading sculptors from the UK, Europe and Japan.

805    Mr Edwards expressed the following opinions which I was given no reason to question.

806    In the art world, including in relation to sculpture, it is not uncommon for artists to produce “editions” or multiples of a particular work. An edition refers to a series of identical artworks, usually a signed limited edition made specifically for sale to collectors.

807    In the art world, works from a limited edition or multiples of a sculpture, being casts that are usually bronze, another metal or a synthetic material, are all known by the same title from the first to the final cast in the edition. This will invariably be the case whether the title was given to the work by the artist or by some other third party. This will also be the case whether the relevant casting is made directly under the supervision of the artist or by a third party, including after the artist’s death.

808    But in many cases, additional information would also usually be included, such as the number of prospective casts in an edition and which number in the edition the relevant cast was.

809    So, the various works by Rodin held by the Art Gallery of South Australia and usually on display in the foyer of the contemporary extension to the Gallery building are late 20th century castings of the original works, but are still referred to by the names by which they were originally known.

810    Further, “Balzac” held by the National Gallery of Victoria and usually on display on the ground level of the Gallery’s St Kilda Road building is labelled as such, even though it was cast in 1967, some 67 years after the original was created.

811    Let me turn to another matter concerning the commissioning and commissioner of a sculpture.

812    An artistic work whether commissioned or not will usually have an integrity and a life of its own and it may be discussed and analysed, including in relation to the ideas embodied or suggested by it, independently of any knowledge, discussion or even reference to any commission or sponsorship which may have assisted in its inception.

813    Now this is not to say that such information is not useful or interesting. Such information may inform how a work is to be interpreted or discussed. But it is not inherently part of the work and in many cases may only be known to specialists.

814    Let me say something about commercial contexts. A company that becomes associated with an artwork through a commission or sponsorship can gain a higher public profile. But even if planned or hoped for, this is incidental to rather than an inherent feature of commissioning or sponsoring a work. Further, this profile is usually obtained at the time of launch. Later, the profile is usually that of the artist and/or the artwork.

815    Now the more iconic a work, the more likely it is that information relating to its creation, whilst remaining interesting to some observers, is largely irrelevant to its meaning or at least the meaning ascribed to it by commentators. This will be particularly so where that meaning is created through a public response to a work, which is largely attributable to matters other than the mere fact of money having been paid for its creation by the commissioner. In this respect, the skills of the artist, the subject matter of the work and the environment in which it appears in public are all factors which affect the public response to a work.

816    Take the creation scenes on the ceiling of the Sistine Chapel by Michelangelo, and particularly the iconic hand of God reaching out to the hand of Adam. It is unlikely that most people viewing the image, other than possibly those viewing it in the Chapel itself and/or those with a particular understanding of ecclesiastical law, would immediately associate the work with the commissioning Pope.

817    A less iconic example is the Salvador Dali work recently acquired by the National Gallery of Victoria – “Trilogy of the Desert – Mirage” of 1946. That work was originally commissioned by Shulton Cosmetics to promote a new perfume, Desert Flower. It is unlikely that the general public would know that fact. And even if members of the public did read that fact on, say, a plaque or in a review of the artistic work, it is not likely that they would consider that the identity of the commissioner has relevance to how they view the artwork and how they remember it.

818    For art specialists, the fact of the commission may assist in explaining the subject matter of the painting, some of its formal qualities or highlight the constraints within which the artist worked. But the commission would not then fix or determine its meaning or value. The meaning and value of an artwork is ultimately created by the skill of the artist and the reactions and knowledge of the viewer, rather than the purse of the commissioner.

819    In any case, once one comes to editions/multiples of a work, the connection between the commissioner or sponsor and the particular edition/multiple becomes even more distant. Indeed, in such cases, the purchaser is in a sense the actual commissioner or sponsor of that copy, and not the commissioner that may have sponsored the creation of the first version.

820    Applying the above opinions to the replica, being a full-scale bronze cast from a limited edition of the New York statue, Mr Edwards expressed the following views.

821    In his opinion, it would be highly unusual for any limited edition replica of the New York statue to be known by any name other than Fearless Girl. This would particularly be the case where, as here, the work is a full-scale cast authorised by the artist. But his opinion was the same whether the work was cast from the original mold or by some other means, such as a three-dimensional scan supervised by the artist. In his opinion, to refer to an edition/multiple by another name would be obscure and unusual. But he said that for cataloguing purposes, one ordinarily would include additional information about which number the particular copy was in the series, and information about casting date and so on. But such information would not usually be given in the name of the work and nor would it change the name of the work.

822    Further, Mr Edwards accepted that the reputation of a work could be informed by the circumstances of its commissioning or sponsorship. He was aware from his time in the art world that the New York statue had generated a great deal of public interest and he knew of the New York statue before he was approached to give evidence in this matter. But he associated the statue with its creator, the artist. And he was not aware, prior to being told for the purpose of preparing his evidence in this proceeding, that the New York statue was commissioned by or had any association with SSGA.

823    Mr Edwards was cross-examined about the potential link or association between an artwork and the commissioner. He gave the following evidence:

Mr Edwards, at paragraph 23 of your report you express the opinion that:

In a commercial context, a company that becomes associated with an artwork through a commission or sponsorship can thereby gain a higher public profile.

You agree with that statement, of course? ---Insofar as, I would imagine, that’s a very fleeting recognition, probably at the time of the launch of the work.

You would agree, wouldn’t you, Mr Edwards, that that sort of association between an artwork and the commission – that can increase the brand value of a company? ---It could do, not necessarily so.

It could – that sort of association could enable a company to obtain a lot of good PR? ---I would doubt that.

Do you agree that the company could leverage that sort of association to achieve media coverage? ---Yes, certainly at the time of the launch when there will be dignitaries, and there will be press, there will be media releases, and all the parties wishing to get attention will be getting the attention.

Yes? ---That’s a very short-lived association of commissioning event, commissioner, launch event, artist and artwork. From that point on, it’s pretty much the artist and the artwork that resonate with the community.

Yes. Thank you, Mr Edwards. You’re not an expert in marketing, are you, Mr Edwards? ---I am not.

824    The cross-examiner sought to finesse more from Mr Edwards about the public’s knowledge of an association between the artwork and the commissioner. But the cross-examination was not fruitful. He was questioned along the following lines:

So again, that article and, indeed, all of the articles that I’ve just taken you to refer to State Street having commissioned Fearless Girl? ---They do.

And you would accept, wouldn’t you, that the public reading these articles would draw an association between Fearless Girl and State Street? ---At the time of reading, yes, they would.

Yes. So I think the question was – you would accept that the public reading these articles would draw an association between Fearless Girl and State Street? ---I would suggest at the time of reading the article they most certainly would.

Yes. In your report, Mr Edwards, at paragraph 22 you express the view that information about the commissioner or sponsor of a work is not inherently part of the work and may only be known to specialists; is that right? ---That would be my understanding.

Yes. But you’re not suggesting, are you, that information about a commissioner or sponsor is not generally publicly available? ---It would be available if you go looking for it - - - or if you’ve read it in the press.

Thank you. And so – for example, anyone who wanted to know about the commissioner of a work could simply look up that information online? ---If that was the subject that interested them.

Yes? ---Mostly, they would be looking for the artist, and the artist’s background, and the description of the work and so forth.

825    So, there might be an association made by a member of the public at the time of reading a media article or if they went looking for it online.

826    Further, from his experience in the art world, he thought that the reputation of the New York statue and its narrative power derived from the way the work was originally placed in juxtaposition to Charging Bull. When Fearless Girl was placed in juxtaposition to Charging Bull it caused quite a publicity stir. In particular, there were a number of comments made by the creator of Charging Bull, Mr Arturo Di Modica, in the mainstream media about the placement of the New York statue, who apparently had objected to the placement of Fearless Girl near Charging Bull. As I mentioned, the New York statue was subsequently moved to a different location. In Mr Edwards’ view, these events raised public awareness of the New York statue and caused public discourse about its meaning and relevance.

827    In his opinion, in circumstances such as this, the more an artwork took on a story of its own, the more the identity of its commissioner became less relevant.

828    There are obvious limitations as to the use I can make of Mr Edwards’ opinions although I had no reason to doubt any of them in the generality with which they were expressed. His references to the meaning of a work are a little tangential. And at the end of the day, the reputation as to the association of SSGA with the New York statue is a factual question to be informed and determined by the other evidence before me.

829    Now SSGA criticised the evidence of Mr Edwards.

830    According to SSGA, Mr Edwards’ experience was limited to the art world. He was not a marketing expert. His evidence focused on examples of fine art, some commissioned over 100 years ago, like the sculptures of Rodin. But in the present case, the New York statue was commissioned as part of an integrated marketing campaign which was directed at publicising the SHE fund. SSGA said that the New York statue was more akin to the “Oscar”, which has become synonymous with the Academy of Motion Picture Arts and Sciences because of the context of its deployment and use, than to Rodin’s sculptures. SSGA said that Mr  Edwards’ evidence treated the New York statue as a work of art separate from the marketing context in which it was created, installed and publicised and was therefore of little probative value.

831    But in my view SSGA’s criticism of Mr Edwards fails to grapple with his evidence about the passage of time since the launch of the New York statue and his evidence that the association of artwork with the commissioner of the work is usually short-lived. Indeed most of the articles in evidence concerning the New York statue were from early 2017 or early 2018.

832    Further, SSGA’s integrated marketing campaign concerning the New York statue was directed at publicising the SHE fund, which as I have mentioned is a US fund.

What was SSGA’s reputation in Australia?

833    SSGA says that the Australian public at large were keenly aware of, or had an interest in, the association between the New York statue and SSGA. But in my view there was little, if any, evidence to this effect which was probative.

834    As MBL correctly submitted, the evidence showed that the New York statue, as a public artwork, took on a life of its own from the day it was unveiled and had many meanings to many people. Further, although any interest of the Australian audience would have been triggered by limited news coverage at the time of the unveiling of the New York statue, the subsequent news coverage was limited.

835    Further, MBL correctly pointed out that SSGA’s marketing campaign concerning the New York statue was directed at publicising the SHE fund, which was not directly accessible to investors in Australia.

836    Now it may be accepted that the unveiling of the New York statue was a matter of some publicity at the time. But the difficulty for SSGA is taking the next step. It has failed to establish that the relevant members of the class in Australia in 2019 associated the New York statue with SSGA. SSGA conflates the reputation of the New York statue with its own reputation. In my view, the latter was not relevantly proved in Australia at the relevant time. SSGA was largely unknown by members of the public in Victoria in 2019, let alone as being associated with the New York statue.

837    Further, there was no “spill-over reputation” of the Fearless Girl campaign and its association with SSGA into Victoria in 2019.

838    Further, I agree with MBL that it is clear from the evidence that any association in Australia between SSGA and the New York statue was dwarfed by the independent fame of the New York statue itself as a public artwork and the broader gender diversity message associated with the New York statue.

839    Now SSGA suggests that the New York statue’s connection to the financial services sector was central to its unveiling and its popularity. But SSGA has failed to establish that the ongoing popularity and broad message associated with the New York statue had much to do with the financial services sector. The New York statue’s message was one of equality for women, not some endorsement for the values and aspirations of a large US financial institution.

840    Further, it is apparent that there have been numerous media articles published since the unveiling of the New York statue, each of which mentions the New York statue but which do not mention the words “State Street” or “SSGA”.

841    Further, the evidence before me demonstrated that there were many meanings conveyed by Fearless Girl that were unrelated to SSGA. Such meanings related to gender based violence, gender equality, equal pay and sexual harassment. Indeed to the broad public, the replica on display, as it is at Federation Square in Melbourne, presents as a “selfie-inducing” (apparently) depiction of a young girl in a defiant pose to which any number of different but positive messages can be attached. Such themes had little, if anything, to do with the finance industry, gender equality in corporate governance or the unknown SSGA in Melbourne. An example of such an image is the following:

842    Further, although SSGA put into evidence articles associating the New York statue with SSGA, most of these articles were from early 2017 when the New York statue was unveiled, and then in early 2018 when it was announced that the New York statue was to be moved to its current location.

843    Let me address the social media evidence more generally.

844    First, the claimed impressive number of impressions on Twitter is apparently based on there having been 67,000 tweets in the four days following the unveiling of the replica which included one or more of the terms “defiant girl”, “fearlessgirl”, “#fearlessgirl” and “statue of a girl”. But the figure does not establish any association between the New York statue and SSGA, let alone amongst the public in Australia.

845    Second, the claimed 2000% growth in “conversations about SSGA” is apparently based on there having been 1,181 tweets mentioning SSGA in the 24 hours following the unveiling of the New York statue. But it can be inferred that the claimed 2000% growth was from a very low base. Further, it would seem that only a small fraction of the broader social media conversation about the New York statue made any mention of SSGA. And so it would seem that the New York statue immediately took on a life of its own.

846    Third, although SSGA emphasised the point that Australian users ranked 6th globally in social media coverage, on any view, any social media engagement in Australia was very limited in comparison to the United States.

847    Further, Mr Brockelman’s evidence regarding social media coverage of the New York statue is also of little assistance to SSGA concerning its reputation in Australia in 2019. Mr Brockelman’s evidence appears to be based solely on summary figures that SSGA received from a third party. But there is little explanation of how the figures were derived. I would give them little weight in the assessment of SSGA’s reputation in Australia in 2019.

848    Let me turn to another issue.

849    SSGA’s market in Australia and internationally is very select. It is constituted by sophisticated wholesale investors such as high level traders, stockbrokers, financial planners, wealth managers and private banks. They are mostly institutions that have a responsibility to manage money on behalf of an end client. The predominant part of SSGA’s Australian business, whether State Street (US) or State Street (Australia), is asset management on behalf of Australia’s leading investment houses, namely, managing money for large institutional investors. State Street (Australia) does not promote its services to retail markets or consumers. Further, there was no evidence of advertising to the general public in relation to its financial services or at all.

850    I agree with MBL that it is fair to assume that SSGA’s select market in Australia is likely to be highly educated, commercially sophisticated, and not likely to make any connection between MBL, a law firm known to take on big corporate and government interests, such as in class actions, and SSGA simply because of the use of an artwork which may or may not be known to have been commissioned by State Street (US), in its original version, in the US to promote the SHE fund two years prior to MBL’s unveiling of the replica in Australia.

851    Indeed, SSGA led no direct evidence that members of the general public would know the name “State Street” or know of its business in Australia. Of course, I accept that it was not necessary for SSGA to lead such evidence to make out its case.

852    Further, the issue of equality of women in the workplace generally was not the focus of SSGA’s Fearless Girl campaign. Unlike MBL, SSGA is not in any sense a campaigner seeking to influence broad popular opinion on important political or social causes in Australia. To the extent that it has been engaged with gender issues in Australia, this activity was focused on the market-focused issue of gender diversity in corporate governance on the boards of Australian listed companies.

853    State Street (Australia)’s promotion of the Fearless Girl campaign was targeted to its sophisticated and select clients. It is clear from an examination of some of the marketing material sent to these clients that the material was expressly not intended for public use and was intended for its institutional clients. Further, even where marketing material had been sent to State Street (Australia)’s targeted audience, few, if any, viewed it.

854    Similarly, with presentations provided by State Street (Australia), each was not for public dissemination and they were only for State Street (Australia)’s sophisticated and select clients.

855    In some cases, other than expecting that the attendees would be actual or potential institutional clients, Mr MacNevin had little idea who had actually attended the presentations in question. Further, little was said about Fearless Girl. The pitch presentation pack of approximately 170 pages in evidence included just one page that referred to Fearless Girl. In the 83-page document comprising the “Morningstar State Street ETFs Equities Review” State Street (Australia) included a photo of the New York statue, noting the name of the artist, but no mention was made of the statue by name. Moreover, this one page discussed SSGA’s asset stewardship program and the impact of this program, particularly the use of voting rights.

856    Further, an analysis of a program run by the Rainmaker Group for financial services professionals, of which State Street (Australia) was a participant, revealed a small, select and sophisticated group of attendees. The presentation prepared by State Street (Australia) for the program referred briefly to Fearless Girl in a chronological sense as part of the timeline for encouraging greater diversity on boards. Similarly, information about State Street (Australia)’s Global Market Outlook event series for 2018 revealed 19 attendees in Melbourne and 24 in Sydney; the list of attendees was also small but highly sophisticated.

857    Further, in each of the presentations to which Mr MacNevin was taken in cross-examination, when images of the New York statue appeared, they were labelled only by the attribution “Sculpture by Kristen Visbal”. Such use reinforced the artist’s reputation in relation to the New York statue. Such an attribution did not support SSGA’s assertion that its clients were educated as to SSGA’s rights or association in relation to the statue.

858    Let me now deal with the question of promotion through websites. State Street (Australia) says that it promoted the New York statue and the Fearless Girl campaign through its various websites. As I have said, State Street (Australia) manages money for institutional clients, retail traders, brokers, financial advisers and private wealth groups.

859    Prior to November 2019, State Street (Australia)’s business was promoted to such investors through two websites. First, it promoted through the main SSGA website (www.ssga/apac/au). Second, it promoted through the SPDRs website (www.spdrs.com.au). This was a specialist website for the promotion of State Street (Australia)’s SPDR ETF (Standard & Poor’s Depository Receipts Exchange Traded Funds) products, which was done under the SPDR brand and not the SSGA brand. I would note for completeness that apparently, in November 2019, SSGA upgraded its websites globally such that SSGA’s business in Australia, including SPDR ETFs, is now promoted through one website only (www.ssga.com/au).

860    I should note also that the pre-November 2019 State Street (Australia) website, the now defunct SPDRs website, and the post-November 2019 State Street (Australia) website did not promote the SHE fund, being a US investment fund available only to US investors.

861    Turning first to the pre-November 2019 State Street (Australia) website. State Street (Australia) says that it promoted the New York Statue and the Fearless Girl campaign via this website by including a permanent link to pages containing information on the Fearless Girl campaign and a link to the current annual asset stewardship report. Now a visitor to the State Street (Australia) website in February 2019 for the purpose of accessing information concerning the New York statue and the Fearless Girl campaign would have encountered various filters and obstacles in order to do so. First, upon accessing the website they would have been required to select Australia as their location. Second, they would have been required to identify themselves as either a retail investor, institutional investor, financial adviser, or consultant. Third, having made these selections, they would then have needed to navigate to the “About Us” tab, followed by the “Who We Are” tab in order to locate a link to the Fearless Girl page. Mr MacNevin gave evidence that during the period 1 January 2018 to 31 March 2019 31 unique visitors to State Street (Australia)’s website who identified themselves as a retail investor accessed the Fearless Girl page. Further, 82 unique visitors who identified themselves as institutional investors, 165 unique visitors who identified themselves as financial advisers and 24 unique visitors who identified themselves as consultants accessed this page. These figures are underwhelming to say the least. They go nowhere near showing that “the public” would associate the replica with SSGA by reason of the pre-November 2019 State Street (Australia) website.

862    Turning to the SPDRs website, as I have said prior to November 2019 State Street (Australia) maintained a separate website for the promotion of its SPDR ETF products. I should note that access to the SPDRs website was not restricted by the various filters in place on the main State Street (Australia) website. Mr MacNevin gave evidence that between 1 March 2018 to 31 August 2018 the homepage of the SPDRs website contained a link to the Fearless Girl page on the main SSGA website. This link was accompanied by the heading “Change is possible” and the statement “Learn more about the impact Fearless Girl has had one year later”. There was also an image of the New York statue accompanied by a statement identifying it as a “Sculpture by Kristen Visbal”. I should note that it appears that by February 2019 the homepage of the SPDRs website had been updated to remove this content and that by the second half of 2019 the website was no longer live, having been rolled into the main SSGA website. Now Mr MacNevin gave evidence that between 1 March 2018 and 31 August 2018 there were 9,221 visitors to the SPDRs homepage. Any such visitors who did in fact see the image of the New York statue on the SPDRs homepage between March and August 2018 may well have associated it with the SPDR brand rather than the SSGA brand, if there was any association at all.

863    Now at the trial, Mr MacNevin indicated that while his evidence concerning the State Street (Australia) and SPDRs websites was correct at the time it was given in September 2019 that “just literally in the last week… there has been a global effort to upgrade all of these websites”. SSGA’s solicitor, Mr Vasudevan, gave evidence concerning State Street (Australia)’s upgraded website. Mr Vasudevan’s evidence demonstrated that information regarding Fearless Girl was similarly obscure on the upgraded website. Only after, first, having gone through several filters including location, language, investor type and product type, second, accepting the terms and conditions and, third, navigating to the “About Us” page, followed by the “What We Stand For” page would a visitor locate information regarding Fearless Girl at the very bottom of that page. Now the level of the detail of the information set out on the page was dependent upon whether the visitor had identified themselves as an individual investor, institutional investor or financial adviser/intermediary and whether they had indicated an interested in managed funds or ETFs. So, an individual investor interested in managed fund products would have found on the “What We Stand For” page under the heading “Meet Fearless Girl” an image of the New York statue and the statement “Fearless Girl ignited a global conversation about the power of women in leadership and inspired companies around the world to add women to their boards”. They would also have found a heading “Our Asset Stewardship Program” and a link to a brand story titled “How a Fearless Girl is Changing the Way Companies Think About Performance”. However, if that individual investor had indicated an interest in ETF products they would have instead found on the bottom of the “What We Stand For” page a link to the “How a Fearless Girl is Changing the Way Companies Think About Performance” brand story only.

864    At this point let me draw the following conclusions concerning the question of reputation in Australia in early 2019.

865    First, I accept that members of the Australian public may have known of the New York statue and the name “Fearless Girl” and recalled in a very general sense the publicity several years earlier concerning its unveiling in New York.

866    Second, I also accept that such members would have associated the New York statue and the name “Fearless Girl” with gender diversity and other social issues concerning equal opportunity and equal pay.

867    Third, I do not accept that such members, except a very small wealthy few, would have known of SSGA generally.

868    Fourth, I do not accept that such members, except a very small wealthy few, would have known that State Street (US) was the commissioner of the New York statue.

869    Fifth, none of the few that I have identified in propositions three and four would:

(a)    mix up MBL (or indeed HESTA or Cbus) with SSGA;

(b)    consider that MBL (or indeed HESTA or Cbus) was associated with SSGA.

870    Sixth, it is problematic to say the least to suggest that the ordinary and reasonable member of the Australian public would, in early 2019, think that SSGA, a Boston based global financial asset manager, had licensed or approved of the replica as it was unveiled in Australia by a local plaintiff law firm known for its social justice work and its “fight for fair” mantra. Indeed that particular plaintiff law firm was well known in Australia for having a philosophy and pushing campaigns that were diametrically opposed to the likes of global financial asset managers.

(d)    The alleged representations and infringing conduct

871    At this point it is now convenient to deal with SSGA’s case concerning the making of the alleged representations. Let me deal with each of the principal representations in turn.

Did MBL represent that the replica was the New York statue?

872    SSGA says that MBL’s conduct promoted the replica as if it was the New York statue and authorised others, including HESTA and Cbus, to make such a representation ([50(a)] of the second further amended statement of claim). SSGA says that such a representation was conveyed in:

(a)    the text of the covering email to the first invitation sent on 12 February 2019 which read “We’re proud to be bringing Fearless Girl, a globally recognised symbol of gender equality, to Melbourne along with our partners HESTA and Cbus”;

(b)    the text of the first invitation, which stated: “Join us for an exclusive unveiling of the iconic Fearless Girl statue in Australia…”;

(c)    the text of the third invitation sent on 25 February 2019 which stated: “Join us for the Australian unveiling of Fearless Girl”;

(d)    the imagery on the first invitation, the second invitation sent on 14 February 2019 and the third invitation, copies of which I have annexed to these reasons, which depicted the New York statue in situ on Wall Street in New York City;

(e)    the text of an Instagram post from MBL, which stated: “Fearless Girl is coming to Australia! We’re proud to be bringing this iconic symbol of gender equality to @federationsquare, in the lead up to International Women’s Day, along with our partners @hesta.super and Cbus Super. #fearlessgirl #IWD2019”;

(f)    the media release issued by MBL on or around 6 February 2019 which I have already set out in full above, which stated, inter-alia:

(i)    “Maurice Blackburn and partners industry super funds HESTA and Cbus bring iconic statue to Australia in the fight for equality and diversity”;

(ii)    “She faced off against the Charging Bull on Wall Street and Fearless Girl is now coming to Australia to stand tall in Melbourne’s CBD as a globally recognised symbol of the fight for gender equality”;

(iii)    “Ahead of International Women’s Day on 8th March, Fearless Girl will take her place in Federation Square”; and

(iv)    “We are proud to be bringing Fearless Girl to Australia…”;

(g)    the fact that the replica is an identical reproduction of the New York statue; and

(h)    the fact that the replica is referred to by the name Fearless Girl.

873    It says that such a representation was false or misleading within the meaning of ss 18 and 29 of the ACL. The replica was not the New York statue and MBL did not bring the New York statue to Melbourne.

874    But in my view no such representation was made.

875    There is no suggestion in the material that MBL was asserting that the replica was the New York statue commissioned by SSGA that is now standing outside the NYSE. The first invitation and the second invitation refer to “Australia’s own Fearless Girl is here!”. That is not a representation that the replica is the same statue as the New York statue. Further, the second invitation and the third invitation include the artist attribution notice and the disclaimer, both of which were clearly visible and dispelled any suggestion that the replica was the New York statue. Having said that, I do accept that there is some sloppiness. So, in the first invitation there is “Join us for an exclusive unveiling of the iconic Fearless Girl statue in Australia…”. But in context I do not think that any such representation was made.

876    Further, the social media posts make the point that the artist was commissioned to make a new Fearless Girl statue for Australia. But again, I do accept that some of the posts are sloppily expressed.

877    Further, the fact that the replica was referred to by its name, Fearless Girl, does not establish that MBL was representing that the replica was the New York statue.

878    Further, the billboard in Federation Square included the artist attribution notice. Moreover, the wrap-around cover and Stellar advertisement similarly included the artist attribution notice; I have annexed copies of these to my reasons.

879    In my view, the allegation that there was a representation that the replica in Melbourne was the New York statue is not made out. Further, if there was such a representation, it was fleeting and quickly dispelled.

Did MBL represent that there was an association?

880    SSGA submitted that MBL has by its conduct represented and authorised others, including HESTA and Cbus, to represent that:

(a)    MBL and its campaign partners were associated with the New York statue;

(b)    the replica or MBL and its campaign partners were associated with SSGA and SSGA’s gender diversity and asset stewardship initiatives;

(c)    the replica was marketed, promoted, installed and displayed by or with the licence, authority, sponsorship or approval of SSGA; and

(d)    MBL and its campaign partners were licensed by or associated with SSGA.

881    Now of course MBL and its campaign partners were loosely “associated” with the New York statue, but only in the sense that they were using and promoting the replica which was of course a copy of the New York statue. But none of that goes anywhere so far as SSGA is concerned.

882    Further, MBL and its campaign partners were using the replica to promote gender diversity issues. But again, none of this goes anywhere so far as SSGA is concerned.

883    Save for what I have just said, none of SSGA’s asserted representations are made out.

884    It is appropriate at this point to delve into some detail.

885    SSGA says that MBL created the MBL campaign in a manner that contained the majority of the elements of the Fearless Girl campaign run by State Street (US).

886    In this respect, SSGA says that:

(a)    the installation of the replica was in a prominent public venue;

(b)    the MBL campaign was associated with International Women’s Day;

(c)    the MBL campaign involved a social media campaign to create momentum which included the use of hashtags #fearlessgirl, #IWD and #IWD2019;

(d)    media releases containing a “call to action” were issued to leverage the coverage created by the installation; and

(e)    an unveiling ceremony, that is the launch event, was held with media and public figures in attendance.

887    Now all of that can be accepted. But none of it goes anywhere. None of this conveys the representations of association asserted by SSGA.

888    Further, SSGA said that these association representations were clearly likely to be conveyed to members of the relevant classes in Australia given SSGA’s substantial reputation in relation to the New York statue and the Fearless Girl campaign. I disagree. As I have said, SSGA had no such relevant reputation in Australia.

889    Further, SSGA says that the significant degree of similarities between the campaigns would have reinforced the association between the MBL campaign and the Fearless Girl campaign to members of the classes. I disagree. Now SSGA prayed in aid the evidence of Mr Brockelman on this aspect although his thoughts and musings on this aspect in my view could only take SSGA so far. Members of the public are unlikely to have known of the similarity. And even if they did, that was little evidence for any representation of association.

890    Further, SSGA says that by commissioning the replica for use in connection with the MBL campaign, MBL was seeking to leverage the reputation in the New York statue for its own campaign. But assuming that to be so, that does not make out the representations of association that have been alleged.

891    Let me identify some of the documents identified by SSGA.

892    A powerpoint presentation on the MBL campaign prepared by Mr Pharaoh for Ms Hanlan on 25 January 2019, stated under the heading “A Fearless Girl for Melbourne”:

Maurice Blackburn, Cbus and Hesta have partnered with artist Kristen Visbal to bring a life-sized bronze replica of this inspiring, powerful & extremely popular statue to Australia, in order to highlight the inequalities that continue to prevail in Australian workplaces. Fearless Girl is a powerful representation of the fight for equality in the workplace – from the gender pay gap, to equal representation between men and women at board level and in senior positions within organisations, to building workplace cultures that are free from harassment and supporting both diverse and flexible working needs …

893    In an email sent on 13 June 2018 by Ms Hanlan to Mr Ratcliff, Ms Chaudhuri, Mr Pharaoh and Ms Nealon, Ms Hanlan stated: “After talking with each of you I think we think we agree that she could contribute to the campaign by bringing her international brand and making our campaign part of a global movement.” The reference to “she” is more likely to be to Fearless Girl than the artist. In the same email, Ms Hanlan stated: “Im thinking that having Fearless Girl might help attract and get some of the coalition members on board – we are asking them to give money towards investing in an iconic piece of symbolic art that has an established narrative.” In the same email, Ms Hanlan stated: “I think we’d have a much easier time finding a home for Fearless Girl than something we create ourselves – wed [sic] be part of a global movement.”

894    In an email sent on 19 June 2018 to a representative of Deloitte, Ms Hanlan attached slides that stated:

we will be working with Kristen Visbal – the artist who created her, to bring a life-sized bronze replica to Australia, which will be permanently housed in Melbourne.

FEARLESS GIRL MELBOURNE will be one of only a few replicas around the world to take a high-profile public stand for equality.

895    In an email sent on 25 June 2018, a representative of the Curated Content Agency commented to Ms Hanlan regarding a proposed micro-documentary on the replica that “Given FG New York origins - there is a good pitch there. I also think the video would be picked up by media everywhere - and with a video we get to extend the life of the media opportunity.”

896    In a draft presentation prepared by Mr Pharaoh on 16 July 2018 regarding the MBL campaign, a slide describing the replica stated under the heading “A Fearless Girl for Melbourne”:

The statue “Fearless Girl” was created by sculptor Kristen Visbal and erected in the Bowling Green park in New York’s financial district in March 2017 in honour of International Women’s Day. Commissioned by State Street Global Advisors, the statue was intended to raise awareness of the need to improve gender diversity in corporate leadership roles and to celebrate the power of women in leadership and the potential of the next generation of women leaders.

Fearless Girl was immediately and wildly popular, with New York mayor Bill de Blasio stating that the statue was a symbol of ‘standing up to fear, standing up to power, being able to find the strength in yourselves to do what’s right’, and that it inspired women to ‘teach their daughters and other women in their lives to believe in themselves’.

Originally intended to be removed after four days, the statue remained for over a year because of the overwhelming public response. Persistent campaigning for Fearless Girl to have a permanent home began as soon as she first appeared (including a petition that gained 28,000 signatures), and the statue was granted a permanent location opposite the New York Stock Exchange in April 2018. Since her unveiling Fearless Girl has been the subject of thousands of selfies and photos of people imitating her pose. The statue single-handedly attracted so many visitors to Bowling Green that it became a traffic hazard, prompting the move to the permanent position.

An integral part of our ‘We’ve earned it’ campaign will be working with Kristen Visbal – the artist who created Fearless Girl, to bring a life-sized bronze replica of the statue to Australia, and have it permanently housed in a prominent public location in Melbourne. Melbourne’s Fearless Girl will be one of only a few replicas around the world to take a high-profile public stand for equality and will serve as a powerful and inspiring symbol for our Equal Earning Potential campaign. Harnessing the popularity of the Fearless Girl image and the emotions that she provokes in all who see her is a key part of bringing the gaze of the Australian public back onto the issue of pay parity and motivating all Australians to personally take steps towards a more equal workplace and to collectively throw their weight behind this important and timely campaign.

897    There is a question as to whether Ms Hanlan asked for this.

898    In an email sent on 23 November 2018 from Ms Sanger to a representative of Deloitte, she stated under the heading “Become a Fearless Girl Partner”:

Fearless Girl made headlines all over the world in 2017 when it was unveiled on Wall Street as a symbol of empowerment and equality. We will be bringing a life-sized bronze replica of Fearless girl to Australia, to be permanently housed in Melbourne.

Fearless Girl Melbourne will be one of only a limited number of replicas that have been placed in major cities around the world.

Your company name will feature on the plaque of this iconic artwork …

899    An email sent on 24 January 2019 from Ms Grainne Blessing of MBL to Mr Varghese attached a draft CEO management report for a meeting of MBL’s board of directors on 5 February 2019. The draft report stated under the “Fearless Girl brand campaign”:

This iconic statue was originally commissioned to advocate for greater gender diversity on American company boards, but it has gone on to become synonymous with wider aspirations for gender diversity and more generally what any young girl can become.

While the original stands in Wall Street, a replica along with the artist will be arriving in Australia in the final week of February 2019. In New York she has attracted hundreds of thousands of visitors and millions of social media impressions.

900    Later drafts did not have this statement. The final report is not in evidence.

901    In an email sent on 31 January 2019 from Ms Jade Thomson, MBL’s National Media Manager, to Ms Hanlan and others, Ms Thomson stated:

I agree with the observation that SSGA is focussed largely on female leadership and they are a lot more specific in the call to action than what we have included at present – specifically it calls for board to include women or to increase the number of women on their boards.

I think though [Ms Pantelidis’] point more broadly is less about the push on female leadership and more so that the page does a good job of outlining why a group like SSGA got involved in a project like FG, that could then in turn possibly be applied to how you could talk about super funds in the same context – for example the page says that they use a systemic and risk-based approach to overseeing their environmental, social and governance issues (ESG) and each year prioritise engagement around the themes they believe to be relevant.

So I think it’s a good pointer for when there will be more substantive comments/references made to the other partners that the example of SSGA could be a good way to consider framing that – Ie as super funds they take a considered approach to the causes and campaigns they support in meeting their E[S]G principles (or better wording) and that’s why they are supporting this campaign, because they believe gender equality is important. It will be a call for those partners about what they ultimately end up saying, but this at least may give us a guide for how to do a first cut of any such materials to get closer to the mark for them.

On that basis I think the statement as it stands currently is ok, because the references to those other partners is v[ery] brief and it’s us doing all the talking, but I think the above could be useful for any materials such as an unveiling release that will include more commentary/inputs from those other partners. If we were to make any tweaks now it would probably be to include something about why all three partners were motivated to bring her here, but perhaps we see what the view is from the others first on the current draft.

Make sense?

[Ms Hanlan] – I am happy to respond along the lines of the above to [Ms Pantelidis] if you are comfortable with that.

902    In an email sent on 12 February 2019 between OGB representatives a comment was made that: “Can we not use a more iconic i.e. a real image of her from her place in New York facing down the bull? Or are we legally not allowed to show her on Wall Street? This would be much better I think as this is the image people recognise and it fits with her “coming” to Australia”.

903    Generally, SSGA says that these documents reveal that MBL was aware of the substantial reputation in the Fearless Girl campaign and the New York statue. It says that it was intended to take advantage of the likelihood that members of the relevant classes would believe that there was an association between the MBL campaign and the Fearless Girl campaign to enable MBL and its campaign partners to trade off the huge investment made by SSGA in the Fearless Girl campaign for the benefit of the MBL campaign. And it is said that I should infer that MBL achieved that objective. But in my view such a submission is confused.

904    Let it be assumed that MBL was aware of the success of the Fearless Girl campaign. Let it also be assumed that somehow it was seeking to leverage off the value of that campaign. So what? That does not establish that it made the representations concerning an association with SSGA. Further, the question is not some loose association in the public’s mind between the New York statue and the replica. Rather, the question is whether it was being represented by MBL that there was an association of MBL or the replica with SSGA. No such representation was being made.

905    Further, SSGA says that Mr Brockelman and Mr MacNevin gave evidence of the likelihood that members of the public and members of the financial services sector would be misled. I must say that I treated these self-serving opinions as having little value.

906    I reject SSGA’s case. In my view, none of the representations of association were made.

907    There was no representation of any association between the replica or MBL and SSGA or SSGA’s gender diversity and asset stewardship initiatives. Further, there was no representation of any licence, authority, sponsorship or approval of SSGA. Of course, if the representations had been made, they would have been false or misleading. But no such representations were made.

908    Further, no reasonable member of the public would assume that any replica must be licensed or permitted by SSGA, as the commissioner of the New York statue.

909    Further, there is no evidence of knowledge by the public in Australia of any underlying rights by SSGA.

910    Now SSGA has sought to rely on character merchandising cases such as Twentieth Century Fox Film Corporation v South Australian Brewing Co Ltd & Lion Nathan Australia Pty Ltd (1996) 66 FCR 451. But I agree with MBL that the public’s deemed awareness of standard practices of broadcasting giants such as Disney and Twentieth Century Fox licensing rights in relation to their well-known and actively licensed characters is not comparable to SSGA’s position vis-à-vis the New York statue. There is no evidence of any standard practice between artists and the original commissioners of public artworks giving rise to any relevant exclusive rights.

911    Let me say something more specific about SSGA’s pleaded case.

912    In [50] of the second further amended statement of claim, the following is pleaded:

By reason of the matters referred to in paragraphs 20 to 49, in the course of the promotion of, or in connection with the use of, the Replica, each of Maurice Blackburn, HESTA and/or Cbus has made, and further or alternatively Maurice Blackburn is threatening to make, one or more of the following representations to the following effect to members of the public (the Representations):

 (a)    that the Replica is the original Statue;

(b)    that the Replica is associated with SSGA, SSGA’s gender diversity and/or asset stewardship initiatives;

(c)    that Maurice Blackburn, HESTA and/or Cbus are associated with the original Statue;

(d)    that Maurice Blackburn, HESTA and/or Cbus are associated with SSGA, SSGA’s gender diversity and/or asset stewardship initiatives;

(e)    that gender diversity initiatives of Maurice Blackburn, HESTA and/or Cbus are associated with SSGA’s gender diversity and/or asset stewardship initiatives;

(f)    that the Replica is marketed, promoted, installed and displayed by, or with the licence or authority of, SSGA;

 (g)    that the Replica is licensed, sponsored or approved by SSGA;

(h)    that Maurice Blackburn, HESTA and/or Cbus are licensed by or associated with SSGA; and

(i)    that the Replica is associated with SSGA’s gender diversity and/or asset stewardship initiatives.

913    The representations pleaded in [50(f), (g) and (h)] required the public to actually know that SSGA commissioned the New York statue. But artistic works, whether commissioned or not, usually have an integrity and a life of their own and may be discussed and analysed independently of any knowledge, discussion or even reference to, any commission or sponsorship which may have assisted with their birth. As Mr Edwards noted, any association of the artwork with the commissioner of the work is “a very short-lived association of commissioning event, commissioner, launch event, artist and artwork. From that point on, it’s pretty much the artist and the artwork that resonate with the community”.

914    Further, the representations in [50(b), (d), (e) and (i)] rely on a representation of some sort of association with SSGA.

915    But SSGA did not have a sufficient association with the New York statue in the minds of a significant proportion of ordinary or reasonable members of the Australian public, such that the representations in [50(b), (d), (e) and/or (i)] were conveyed.

916    Now Mr Brockelman referred to extracts from the MBL website, highlighting statements made by MBL that show that it has challenged large financial organisations. Further, Mr Brockelman highlighted the adversarial nature of the services MBL advertises on its website, as compared with SSGA’s approach which “is not adversarial”. But given these and other differences, it is problematic to suggest that members of the public would assume a connection between MBL and SSGA, even if they knew who SSGA were, which was not shown. MBL and SSGA are hardly competitors and often serve diametrically opposed interests.

917    Further, and as I have said, SSGA asserts that MBL was seeking to leverage the reputation in the New York statue for its own campaign. But this is a different thing to seeking to leverage any reputation SSGA has in relation to the Fearless Girl with the MBL campaign. It was clear from Ms Hanlan’s evidence that the narrative she was concerned with was “gender equality”, not the more limited messaging promoted by SSGA, being the influencing of board membership.

918    Further, I agree with MBL that there was no reason why members of the relevant class would assume an association or connection between MBL and SSGA as opposed to one between MBL and the artist. Indeed, as MBL put it, given the antithetical relationship between SSGA and MBL, one can readily assume that if members of the public made any assumptions of a connection between MBL and someone or something in relation to its use of the replica, they would likely assume a connection with the artist.

919    Further, for reasons that I have already identified I would dispose of SSGA’s case asserting that it was represented that MBL, HESTA and/or Cbus were associated with the New York statue in the sense pleaded ([50(c)] of the second further amended statement of claim).

920    In my view, SSGA has failed to establish any of its pleaded representations.

Disclaimers

921    But even if the alleged association representations were made, their potentially misleading or deceptive effect was dispelled by the various disclaimers that MBL put on its published material.

922    Since 14 February 2019, MBL has included a disclaimer in materials relating to the replica.

923    The second invitation had the statement at its foot:

The purchase, promotion and installation of this sculpture, the surrounding communications, as well as the sponsors and promoters, are not in any way affiliated with, endorsed or licensed by State Street Global Advisors Trust Company or State Street Global Advisors Australia or their related entities.

924    The third invitation had the disclaimer:

The “Fearless Girl” sculpture is a limited edition reproduction of the original “Fearless Girl” sculpture in New York, created by the artist Kristen Visbal. Maurice Blackburn, HESTA and Cbus are not in any way affiliated with, endorsed or licensed by State Street Global Advisors Trust Company, the commissioner of the original “Fearless Girl” sculpture, or State Street Global Advisors Australia or their related entities, in relation to the display of the reproduction of the “Fearless Girl” sculpture.

925    The disclaimer was introduced by MBL after the commencement of these proceeding by SSGA and after the initial launch of the MBL campaign.

926    Further, on 21 February 2019, an interim injunction granted on 14 February 2019 was discharged by me upon MBL undertaking to the Court to place the following wording on prominent signage at the launch event, and at all other launch events which occurred until 15 May 2019 at which the replica would be present, and in all press releases issued by MBL concerning such events:

The “Fearless Girl” sculpture is a limited edition reproduction of the original “Fearless Girl” sculpture in New York, created by the artist Kristen Visbal.

Maurice Blackburn, Hesta and Cbus are not in any way affiliated with, endorsed or licensed by State Street Global Advisors Trust Company, the commissioner of the original “Fearless Girl” sculpture, or State Street Global Advisors Australia Ltd or their related entities, in relation to the display of the reproduction of the “Fearless Girl” sculpture.

927    Clearly, in assessing or characterising the relevant conduct as to whether it was misleading or deceptive or likely to mislead or deceive, it is necessary to have regard to any relevant disclaimer.

928    Now SSGA has made the following points.

929    SSGA says that in the period prior to 14 February 2019, MBL’s and its campaign partners’ activities with respect to the replica, which included issuing press releases and posting content on social media, occurred without reference to any disclaimer. It says that the disclaimer cannot undo the misleading conduct that arose prior to 14 February 2019. But in my view there was none.

930    SSGA says that the first invitation to the launch event, which was sent to 1,870 invitees, contained no disclaimer. And there is no evidence that these invitees were re-sent an invitation with a disclaimer after 14 February 2019. That is true. But in my view if there was any misleading impression, which I do not accept, it was fleeting and quickly dispelled by subsequent events.

931    Further, SSGA says that even after MBL introduced a disclaimer on its invitations to the launch event, which was on the second invitation in limited form at the bottom of the invitation and on the third invitation on the bottom right hand side of the invitation, those disclaimers appeared in small print. Now that may be so, but in my view they were effective.

932    Further, it says that the disclaimer could not logically undo the continuing effect of the misrepresentations after 14 February 2019. The social media posts and the launch event were all part of an extensive consolidated promotional campaign, which included the various promotional statements that had been made prior to the inclusion of the disclaimer. It says that the disclaimer and the post 14 February 2019 conduct cannot be segregated from the earlier conduct, considering that:

(a)    the covering email to the first invitation read: “We’re proud to be bringing Fearless Girl, a globally recognised symbol of gender equality, to Melbourne along with our partners HESTA and Cbus”;

(b)    the text of the first invitation stated: “Join us for an exclusive unveiling of the iconic Fearless Girl statue in Australia…”;

(c)    the text of the third invitation stated: “Join us for the Australian unveiling of Fearless Girl”;

(d)    the imagery on the first invitation, second invitation and third invitation depicted the New York statue in situ on Wall Street in New York;

(e)    the replica is an identical reproduction of the New York statue;

(f)    the replica is referred to by reference to the name Fearless Girl; and

(g)    SSGA enjoys extensive reputation in the New York statue, Fearless Girl brand and the Fearless Girl trade mark.

933    Further, it says that the second invitation and the third invitation which depicted the New York statue in situ on Wall Street in New York City and its associated material meant that the disclaimers themselves were misleading or deceptive due to the imagery and text continuing to convey the representations. At best, the messages conveyed, to the extent that a viewer would have seen or considered the disclaimers, were contradictory and misleading. I disagree.

934    Further, SSGA says that the disclaimer appearing on the large billboard at Federation Square, which was displayed during the launch event, was smaller than other elements on the billboard, such as the text “FEARLESS AGAINST ALL ODDS”, the image of the New York statue and the corporate logos of MBL, HESTA and Cbus. Like the disclaimers that appeared on the second and third invitations, the disclaimer appearing on the large billboard was small. Now admittedly that is so, but in my view they were still effective.

935    Further, the disclaimer in the wrap-around cover and the Stellar advertisement appeared at the bottom of the advertisements in small print and with less prominence when compared to the words “FEARLESS GIRL” in large capital letters and the logos of MBL, HESTA and Cbus. All true, but in my view they were still effective.

936    Further, SSGA points out that the replica is presently on display in Federation Square with no accompanying disclaimer. SSGA says that consumers continue to be misled. This is exemplified by a more recent Instagram post by a member of the public on 18 January 2020 of a photograph of the replica with the comment “Fearless Girl on loan from NYC”. I should say now that this is not part of the pleaded case. Little can be made of the Instagram post produced by SSGA on the last day of evidence in its voluminous tender bundle. Indeed, almost one year after the unveiling of the replica in Federation Square, SSGA found a single Instagram post referring to the “Fearless Girl on loan from NYC”. Further, what is notable is that of all the hashtags accompanying the post, there is no mention of SSGA.

937    Now at present there are no final orders requiring MBL to use a disclaimer in connection with the replica, nor has MBL proffered any permanent undertakings to similar effect. The undertaking given by MBL to the Court requiring it to use a disclaimer operated until 15 May 2019. There is no ongoing requirement for MBL to use a disclaimer in connection with its use of the replica. I will hear further from the parties on this question as to the continuing use of the replica and the need for any disclaimer to be used. As I have said, apparently, the replica is still on display in Federation Square with no accompanying disclaimer.

938    Generally, in my view SSGA’s claims are significantly weakened by the disclaimers.

939    The second invitation included an attribution to the artist as the creator of the work, and acknowledged there was no association with SSGA.

940    Moreover, the third invitation, the billboard in Federation Square, the wrap-around cover and the Stellar advertisement included the wording that MBL had undertaken to the Court to use, being that:

(a)    the “Fearless Girl” sculpture is a limited edition reproduction of the original “Fearless Girl” sculpture in New York, created by Kristen Visbal; and

(b)    Maurice Blackburn, HESTA and Cbus are not in any way affiliated with, endorsed or licensed by State Street Global Advisors Trust Company, the commissioner of the original “Fearless Girl” sculpture, or State Street Global Advisors Australia Ltd or their related entities, in relation to the display of the reproduction of the “Fearless Girl” sculpture.

941    The disclaimer was prominent. And the attendees at the launch event were invited guests who can be expected to have paid regard to the wording on the billboards in the vicinity of the replica.

942    Moreover, with the wrap-around cover and the Stellar advertisement, the use of the disclaimer cannot be said to have been presented in such a way as to accentuate part of the articles complained of.

943    Let me make one final point. SSGA referred to one email received by SSGA on 8 February 2019 from Ms Michelle Baltazar of the Financial Standard. She enquired whether SSGA would be interested in doing some cross-promotion with the Financial Standard in relation to the replica on the basis that she believed SSGA must have been involved. SSGA said this is a clear instance of confusion which was not dispelled by any disclaimer. But in essence, one swallow does not make a summer. And in any event, it appears this was the only communication SSGA received from a third party concerning the replica in Australia and on the face of the communication appears to have been a pitch for business. This takes SSGA nowhere.

944    In my view, SSGA’s criticisms of the disclaimers have little substance.

(e)    Passing off and harm

945    For the same reasons as to why SSGA ought to fail in relation to their claim for misleading or deceptive conduct, they ought also fail in relation to a claim for passing off. Put simply, there was no relevant misrepresentation. Moreover, SSGA did not have the relevant sufficient reputation in Australia.

946    Now damage is an element of SSGA’s claims for passing off and tortious inference with the master agreement.

947    But SSGA has said that it would, at least, be entitled to an award of nominal damages for the tortious invasion of rights.

948    In any event, SSGA has said that it has suffered substantial damage as a consequence of MBL’s conduct.

949    First, as a result of MBL’s unveiling of the replica, SSGA has now lost the opportunity to unveil its own replica in Australia. In their evidence, Mr Brockelman and Mr MacNevin referred to the success of SSGA’s unveiling of a replica of the New York statue in London, and the significant media impact it had for SSGA. Mr MacNevin observed that “[i]t will not be credible for SSGA to undertake an unveiling of the Fearless Girl statue in Australia following the Maurice Blackburn launch event”. Accordingly, SSGA said that it has suffered irreparable harm by MBL’s conduct.

950    But SSGA has taken no steps to bring to Australia the New York statue or a replica of it at any time, and no causal connection can be shown between the alleged conduct of MBL and the suggested loss of opportunity. Further, the claimed loss of opportunity fails to take into account that SSGA has not ever had exclusivity in relation to reproductions or replicas of the New York statue. The master agreement clearly establishes that the artist has the right to “create, display and distribute” two-dimensional and three-dimensional copies of the artwork.

951    Second, Mr Brockelman’s evidence referred to the risk of brand confusion arising from the manner in which MBL used the replica and the likelihood of SSGA’s Fearless Girl brand being diluted by the MBL campaign. Mr Brockelman said that the intertwining of MBL’s brand with SSGA, the tying of MBL’s brand to the New York statue and the tying of MBL’s business model to the New York statue was damaging to SSGA’s brand. Mr MacNevin also gave evidence to similar effect.

952    Further, Mr Brockelman and Mr MacNevin also gave evidence in relation to the potential harm to SSGA that may arise from it or the Fearless Girl campaign being associated with MBL, which markets itself as a leading class action law firm in Australia and lists recent class actions including against financial institutions.

953    But as to the suggestion that SSGA has suffered substantial damage as a result of MBL’s actions by means of brand confusion and the likelihood of the Fearless Girl brand being diluted, this requires a sufficient reputation in the brand in the first place. But SSGA has failed to establish a reputation in the brand in Australia.

954    Further, as to the suggestion by SSGA that it will suffer potential harm by being associated with MBL, particularly given its recent class actions against financial institutions, given that MBL is regarded as the antithesis of SSGA’s brand as a large financial services organisation that works for ‘big business’, it is problematic to suggest that anyone, including those in the financial services industry, would associate SSGA with MBL, or think less of SSGA because of MBL’s use of the replica in connection with the issue of gender equality.

955    I do not need to elaborate further. The trial before me only proceeded on the issue of liability and non-pecuniary relief.

TRADE MARK INFRINGEMENT

956    State Street (US) is the registered proprietor of Australian Trade Mark No. 1858845 for the word mark “FEARLESS GIRL” in relation to the following services with a priority date of 16 March 2017:

(a)    class 35: publicity services in the field of public interest in and awareness of gender and diversity issues, and issues pertaining to the governance of corporations and other institutions; and

(b)    class 36: funds investment; financial investment advisory services; financial management of donor-advised funds for charitable purposes; accepting and administering monetary charitable contributions; financial information.

957    State Street (US) says that MBL used the words “Fearless Girl” in connection with such services and thereby infringed State Street (US)’s trade mark. Further, State Street (US) says that HESTA and Cbus also used such words in relation to such services and that MBL authorised such use.

958    Now State Street (US) has put its case under both ss 120(1) and 120(2) of the Trade Marks Act 1995 (Cth). Section 120 of the Act provides:

(1)    A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.

(2)    A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to:

(a)    goods of the same description as that of goods (registered goods) in respect of which the trade mark is registered; or

  (b)    services that are closely related to registered goods; or

(c)    services of the same description as that of services (registered services) in respect of which the trade mark is registered; or

  (d)    goods that are closely related to registered services.

However, the person is not taken to have infringed the trade mark if the person establishes that using the sign as the person did is not likely to deceive or cause confusion.

(a)    Use as a trade mark

959    Let me then turn to the first question of whether MBL used the words as a trade mark.

960    Section 17 of the Act provides:

A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

961    Use as a trade mark is use of the mark as a “badge of origin”, that is, a sign used to distinguish goods or services dealt with in the course of trade by one person from the goods or services of another.

962    In Woolworths Ltd v BP plc (No 2) (2006) 154 FCR 97 Heerey, Allsop and Young JJ said at [77]:

Whether or not there has been use as a trade mark involves an understanding from an objective viewpoint of the purpose and nature of the use, considered in its context in the relevant trade. How the mark has been used may not involve a single or clear idea or message. The mark may be used for a number of purposes, or to a number of ends, but there will be use as a trade mark if one aspect of the use is to distinguish the goods or services provided by a person in the course of trade from the goods or services provided by any other persons, that is to say it must distinguish them in the sense of indicating origin [citations omitted].

963    The determination of this threshold question only involves an examination of the impugned mark, not the registered trade mark.

964    In assessing whether the alleged use is use as a trade mark, it is necessary to examine the purpose and nature of the use in its context. This includes factors such as the positioning of the sign, the type of font used, the size of the words or letters, and the colours which are used, as well as how the sign is applied to the advertising material in question. Prominence is a factor that suggests trade mark use.

965    The assessment of the purpose and nature of the use of the sign is objective, and it is by reference to what a member of the public could be expected to understand by its use.

966    Let me deal first with the question of whether there was use as a trade mark. I will deal with the question of the relevant services being the class 35 and 36 services in a moment, noting of course the differences between s 120(1) and s 120(2).

967    Now there is no dispute that MBL, HESTA and Cbus have used the words “Fearless Girl” in connection with the replica, including in press releases and in social media posts. Further, no discussion of substantial identity or deceptive similarity is necessary, as the words used were identical to the Fearless Girl trade mark.

968    State Street (US) has identified various examples of the use of “Fearless Girl” in the materials published by MBL or with MBL’s approval or consent that are said to be instances of use of “Fearless Girl” as a trade mark. So it has identified and contended the following:

(a)    Each of the first invitation, the second invitation and the third invitation for the launch event placed the words “Fearless Girl” prominently in the largest sized font and in contrastingly coloured text.

(b)    The second invitation also placed the words “Fearless Girl” in inverted comas, which also distinguished it from the rest of the text and which State Street (US) says is a traditional indicator of a trade mark.

(c)    The HESTA version of the press release put “Fearless Girl” in capital letters, a traditional indicator of a trade mark.

(d)    The common wording in the press releases and social media posts had the words “Fearless Girl” not merely alluding to the replica, but to the marketing concept and campaign of Fearless Girl in a commercial context.

(e)    The use of the words “Fearless Girl” was in capital letters and in inverted comas in the wrap-around cover and the Stellar advertisement, which are traditional indicators of a trade mark. These uses also alluded to the marketing concept and campaign of Fearless Girl. In particular, the words “Fearless Girl” in the Stellar advertisement appearing in the centre of the full page advertisement were the largest and most prominent words in the ad. And they appeared much larger and dominated over the MBL, HESTA and Cbus logos which appeared at the bottom of the ad.

(f)    The #fearlessgirl hashtag was used in the various social media posts by HESTA and Cbus. It is said that MBL encouraged the use of this hashtag as a means to publicise the replica and the MBL campaign.

(g)    The words “Fearless Girl” were used as the brand of the campaign in MBL’s communication of offers and presentations to other corporations of publicity services through sponsorship of the campaign.

969    State Street (US) says that MBL’s use of the Fearless Girl trade mark was not solely descriptive as the name of the artwork (simpliciter) but included trade mark use as the brand of the MBL campaign. Further, it says that the MBL campaign was not merely a social or political campaign but also a form of modern marketing, namely, a cause-related publicity campaign designed not only to promote the cause but also the brands and services of MBL, HESTA and Cbus, by association with that cause, for commercial purposes. Further, it says that the launch event and associated publicity materials and social media were not simply publicising the acquisition of the replica, but also, the launch of the MBL campaign, which imitated the Fearless Girl campaign. Further, it says that the MBL, HESTA and Cbus logos and the disclaimer were dwarfed in terms of position, prominence and effect on the publicity materials, when compared to the Fearless Girl trade mark.

970    State Street says that MBL markets itself as a leader on social justice issues, an area that is inherently connected to its services as a plaintiff law firm. And in that context, it says that MBL has used “Fearless Girl” as the brand of its campaign, first, to distinguish the campaign from those of other traders and, second, to indicate a connection in the course of trade between the campaign and MBL, Cbus and HESTA for the purposes of promoting their brands and services.

971    Now I was provided by MBL with an annexure to its submissions concerning alleged trade mark use and a response by SSGA. Having considered these aids and the primary material, I remain unconvinced of State Street (US)’s case on trade mark infringement by MBL on any aspect or by the other sponsors. True it is that the words “Fearless Girl” may have been used to promote the MBL campaign and to promote various gender related issues or messages. But that is not trade mark use, let alone trade mark infringement as alleged.

972    Let me at this point deal with some specific themes arising from State Street (US)’s case.

973    First, State Street (US) says that MBL’s use of the words “Fearless Girl” was not merely descriptive. State Street (US) says that in the context of the MBL campaign, MBL and the other sponsors were not solely using “Fearless Girl” descriptively as the title of the replica, but also in a branding sense as the brand of the campaign to distinguish their own marketing and publicity campaign from those of other traders and to indicate a connection in the course of trade between that campaign and themselves as the origin of that campaign for the purposes of commercially marketing and promoting their brands and services. Indeed, State Street (US) says that during cross-examination, Ms Hanlan conceded that one purpose of the campaign was the promotion of MBL’s and other sponsor’s brands through their sponsorship campaign.

974    Further, State Street (US) says that the fact that “Fearless Girl” was used in a manner which may suggest it was being used descriptively does not mean it was not also being used as a trade mark.

975    Further, State Street (US) says that naming conventions in art, including State Street (US)’s launch of a replica of the New York statue in London and the National Gallery of Australia’s artwork descriptions, do not entail that MBL’s use was solely descriptive. In relation to naming conventions in art, State Street (US) says that a gallery’s use of the names of artworks to describe or reference those artworks would be solely descriptive and that this would not amount to trade mark use. But it says that other uses by a gallery may constitute trade mark use. So, if a gallery had registered “Blue Poles” in class 35 in respect of “publicity services in the field of diversity in the arts”, and the National Gallery of Australia subsequently used “Blue Poles” as the name of a publicity campaign to promote diversity in the arts, and by association the National Gallery and the brands and services of any corporate sponsors of that campaign, this would amount to trade mark use. The name “Blue Poles” would be performing a branding function.

976    Second, State Street (US) says that MBL was using “Fearless Girl” as a brand for its campaign both to potential and actual partners in the campaign, and to the public engaging with the campaign and its marketing collateral. It says that this is reflected in the social media posts and the publicity materials issued by MBL. And it says that this was to distinguish it from the campaigns of other traders. Further, it says that the presence of MBL’s, HESTA’s and Cbus’ own logos does not diminish this.

977    State Street (US) says that the MBL, HESTA and Cbus logos on the invitations, the wrap-around cover and the Stellar advertisement are much smaller and far less prominent in terms of size, positioning and emphasis than the Fearless Girl trade mark. The words “Fearless Girl” are the most prominent words on those publicity materials. It says that the effect of the use of logos in this manner was such that they could not and did not dilute the prominence and effect of the Fearless Girl trade mark as a badge of origin. Further, State Street (US) says that prominence is a relative concept in considering the purpose and nature of use. There was far greater prominence of the Fearless Girl trade mark, which had a diluting effect on the logos of the partners on MBL’s publicity materials.

978    Further, in relation to the use of the words “Fearless Girl” in communications to other corporations promoting and offering participation in MBL’s proposed publicity campaign, State Street (US) says that it is clear from a plain reading of the words in context that it is not solely a descriptive use, but use with a branding function.

979    State Street (US) also points to MBL’s use of the #fearlessgirl hashtag in various social media posts and says that this also amounted to trade mark use as the hashtag is not merely acting as a descriptor. The use of the hashtag is visible to the consumer and would appear to the consumer as operating to distinguish in a branding sense the MBL campaign from the campaign of other traders. It says that MBL’s, Cbus’s and HESTA’s use of the #fearlessgirl hashtag had the intended effect of linking the campaign back to the partners, and is an example of how “Fearless Girl” was used for its branding function in the campaign generally. It says that the use of the hashtag also had the additional function of linking the campaign and the partners to the global movement of the Fearless Girl campaign, to tap into its fame and popularity.

980    Further, it says that the hashtag was deployed by MBL as part of an integrated media strategy so that public posts in and around the launch event would be connected back to MBL, Cbus and HESTA as the origin of the campaign. It says that MBL encouraged the use of the #fearlessgirl hashtag by including in its media strategy document instructions to campaign sponsors including HESTA to use the #fearlessgirl hashtag in their social media posts specifically to publicise the replica and the MBL campaign to consumers. Further, it says that HESTA’s social media posts were promoting the MBL campaign. It says that they were using the #fearlessgirl hashtag as a badge of origin to distinguish their campaign. Further, it says that the social media posts were also promoting HESTA as the sponsor of that campaign and HESTA’s services.

981    I would reject the contentions of State Street (US). In my view there was no use by MBL, HESTA or Cbus of the “Fearless Girl” words as a trade mark.

982    Let me make four points at the outset.

983    The first and central point to make is that the words were used principally to describe the replica.

984    The second point to make is that if the words were used in a fashion beyond the mere descriptive, such as to somehow describe the MBL campaign concerning gender equality and gender diversity, that takes State Street (US) nowhere. That is not trade mark use. And State Street (US)’s fudge if not fairy dust concerning the concept of “branding the campaign” does not magically transform MBL’s use into trade mark use.

985    The third point to make is that the prominence of the words “Fearless Girl” in the various uses asserted by State Street (US) to be trade mark use actually reinforce my first and second points.

986    The fourth point to make is that the presence of MBL’s, HESTA’s and Cbus’ own logos on relevant material is a powerful but not definitive point against State Street (US). Their own logos are used as badges of origin. But I do accept that the use of their own names and devices does not foreclose the use of “Fearless Girl” as a trade mark.

987    Let me delve into some points on the descriptive question and the “course of trade” point.

988    Let it be assumed that the words “Fearless Girl” and their use were not solely descriptive. And let it be assumed that the words “Fearless Girl” and their use were being used to describe or be the face of a social campaign, in this case gender diversity in the work-force and equal pay. And let it be assumed that the breadth of such a campaign included within it gender diversity at board level and also gender diversity in the financial services sector. None of this takes State Street (US) anywhere. To accept these three points does not necessarily entail, as State Street (US) would have it, that MBL’s, HESTA’s and Cbus’ use of the words “Fearless Girl” was trade mark usage.

989    Now State Street (US) has attempted to shift its emphasis to characterise the campaign not as a social campaign but as a marketing campaign for the services of MBL, HESTA and Cbus and to assert that the words “Fearless Girl” were used as part of a marketing campaign for such services. In my view, this is where its case falls over. I would reject that characterisation.

990    Now State Street (US) has sought to leverage off its own usage of the words in its own campaign to suggest that somehow by analogy MBL, HESTA or Cbus were doing the same thing. But clearly not. Indeed, the contrast starkly makes the case against State Street (US). State Street (US)’s activities were all about marketing its SHE fund and its self-described and self-promoted and monetised “stewardship” activities. But MBL, HESTA and Cbus were hardly mimicking State Street (US)’s commercial activities in their use of the words “Fearless Girl”.

991    Further, MBL did not use the words “Fearless Girl” as a badge of origin at all in relation to any services, let alone the services as registered. Rather, the words “Fearless Girl” were used as the title of the artwork that MBL was displaying. Indeed, there is no other way to properly describe the work.

992    Further on this question, let me say something about hashtags. State Street (US) relies on MBL’s use of the #fearlessgirl hashtag and asserts that this is not merely use as a descriptor. But when assessing whether the use of the hashtag is use as a trade mark, it is important to have regard to the context of usage. In the context in which it is used, it is clear that MBL’s use of the #fearlessgirl hashtag is not use as a trade mark. In the case of the replica, the hashtag provides a means of identifying the replica in a manner consistent with social media usage, namely, that hashtags used in such a manner identify the topic or subject of a post, not its maker or source.

993    Further, to the extent that MBL is said to have authorised the use of the words “Fearless Girl” by HESTA and Cbus, which authorisation in my view has been established, they too were not using the words as a trade mark.

994    Before turning to the question of the class 35 and class 36 services, let me just say something about the “course of trade” point embraced by s 17.

995    In my view MBL has not used the words “Fearless Girl” in the course of trade.

996    Now State Street (US) says that the use of a mark “in the course of trade” does not require actual sales or dealings in goods or services, and includes use of the mark in advertising and promotion of such goods or services provided that those goods or services are on the market. I agree with the generality of these observations.

997    It says that the advertising and promotion of HESTA’s and Cbus’ financial services through use of “Fearless Girl” in connection with the MBL campaign confirm that the relevant use is in the course of trade.

998    Similarly, it says that the offer by MBL of the relevant publicity services to potential campaign sponsors under and by reference to the Fearless Girl trade mark amounts to use in the course of trade if those services were available for order or purchase. It says that they clearly were. Further, it says that the financial contribution by sponsors to the costs of the replica and the MBL campaign was, in effect, payment to MBL for the publicity services rendered. But in my view this submission is flawed. MBL was not offering or selling publicity services.

999    Further, State Street (US) says that the fact that the trade mark has been used in the context of a not for profit publicity campaign or not for profit publicity services does not negate the commercial nature of the use given that the campaign and publicity services also had as their purpose the commercial marketing of, and promotion of the brands and services offered by, MBL and the other sponsors. It says that MBL and the other sponsors ultimately receive a monetary or commercial benefit from promoting and advertising the campaign and by association, their brands and services, under and by reference to the Fearless Girl trade mark.

1000    But as to these rolled up propositions, let me make the following points.

1001    First, the fact that, conceivably, MBL, HESTA and Cbus may receive a collateral commercial benefit from the MBL campaign does not make out the “course of trade” point. Those words are in the phrase “to distinguish goods or services dealt with or provided in the course of trade”. None of MBL, HESTA or Cbus were using the words to distinguish their services.

1002    Second and relatedly, it may be accepted that MBL provides legal services, and that HESTA and Cbus provide financial services. And in that sense they do so “in the course of trade”. But we are not dealing with that context but rather with the context of the use of the words “Fearless Girl”. MBL’s use was not to distinguish their legal services in the course of trade; further it did not provide publicity services. HESTA’s and Cbus’ use was not to distinguish their financial services in the course of trade.

1003    Let me turn to the relevant services.

(b)    Use in connection with the relevant services

1004    There are two classes to consider, namely, classes 35 and 36. Let me begin with class 35.

Class 35 – publicity services

1005    State Street (US) says that in relation to use in connection with the relevant services in class 35, whichever way MBL’s activities are characterised, the result is the same. MBL used or authorised the use by HESTA and Cbus of the words “FEARLESS GIRL” as the brand of the publicity campaign itself and MBL has used those words in relation to the offer and promotion of publicity services to actual and potential sponsors of the campaign.

1006    It says that the MBL campaign was in the field of public interest in and awareness of issues relating to gender equality in the workplace, including pay equality.

1007    Therefore, so State Street (US) says, MBL used or authorised the use by HESTA and Cbus of the words “Fearless Girl”:

(a)    in relation to services in class 35, being “publicity services in the field of public interest in and awareness of gender and diversity issues, and issues pertaining to the governance of corporations and other institutions”, within the meaning of s 120(1); or

(b)    in relation to services of the same description as that of the services in class 35 within the meaning of s 120(2)(c), being publicity services in the field of public interest in and awareness of issues relating to gender equality in the workplace, including pay equality.

1008    Further, State Street (US) says that MBL used or authorised the use of the words “Fearless Girl” on or in relation to publicity materials such as the first invitation, the second invitation, the third invitation, the billboard at Federation Square, the wrap-around cover, the Stellar advertisement, and the press and social media releases. It says that those publicity materials are goods which are closely related to the relevant services in class 35 within the meaning of s 120(2)(d). The relevant publicity materials are closely related goods to the relevant publicity services as those services are performed by means of those goods.

1009    State Street (US) says that MBL offered to provide and provided such publicity services in the relevant field to HESTA, Cbus and other potential sponsors such as Bendigo & Adelaide Bank, PwC, Deloitte and AFLW under and by reference to the Fearless Girl trade mark.

1010    State Street (US) says that MBL’s provision of publicity services occurred in two stages of the campaign. First, MBL offered its publicity services to potential partners under and by reference to the mark. Second, MBL delivered those publicity services by commissioning and issuing through its agents, News Corp and OGB, numerous pieces of publicity and marketing collateral as part of the campaign as well as organising and undertaking the launch event. Absent these proceedings, MBL would have taken the replica and the campaign on a marketing and promotional roadshow to Sydney, Brisbane and other regional centres.

1011    Therefore, so State Street (US) says, as part of the campaign, MBL has offered publicity services to potential partners and delivered those publicity services under and by reference to the Fearless Girl trade mark.

1012    Let me deal with the first stage.

1013    Prior to the consumer-facing part of the campaign, which involved the issue of the first invitation, the second invitation and the third invitation, the press and social media releases, the launch event at Federation Square, the wrap-around cover and the Stellar advertisement, MBL engaged in a corporate PR campaign to lobby corporate partners to get on board. MBL approached a number of potential stakeholders to be a part of the campaign. In attempting to attract campaign partners, for example, in an email to Cbus on 12 November 2018 MBL referred to the advertising potential of the MBL campaign, referring to the campaign’s advertising/sponsorship media package as representing “a ‘money can’t buy’ amplification strategy that will effectively promote and leverage your investment in Fearless Girl”.

1014    It says that MBL facilitated the conduct of the campaign, including the purchase of the replica, media arrangements with News Corp, preparations for the launch event, and the placement of the replica at Federation Square. And this conduct occurred under and by reference to the Fearless Girl trade mark.

1015    Further, when pitching its “‘money can’t buy’ amplification strategy” MBL sent potential partners a presentation from News Corp titled “Fearless Girl Partnership 2019” headed on every page with “Fearless Girl”, which set out the branding and publicity benefits of becoming a partner.

1016    On 22 August 2018, Ms Pantelidis emailed representatives from Energy Australia saying that they were looking for a small number of partners to join them as a core coalition group and that coalition partners would receive branding opportunities around Fearless Girl and media, social media and customer engagement opportunities. I am prepared to infer this from the full text of Ms Pantelidis’ email which stated:

Following your fantastic investment in closing the gender pay gap at EnergyAustralia, I would like to invite you to consider becoming part of a business coalition asking the Victorian government to legislate equal pay on a State level, and then hopefully move to a Federal campaign.

Beginning in September, on Equal Pay Day, the coalition which is being driven by Maurice Blackburn Lawyers and will involve up to 6 partners across the business sector, will release extensive research into the gender pay gap in Australia and launch its ‘Equal Earning Potential Project’ calling on businesses to support, collecting consumer signatures and bringing a life size replica of the world famous ‘Fearless Girl’ statue to Australia. FEARLESS GIRL MELBOURNE will be one of only a few replicas around the world to take a high-profile public stand for equality.

We are looking for a small number of partners who are already dedicated to closing the gender pay gap to join us as a core coalition group and for this will receive branding opportunities around Fearless Girl, media, social media and customer engagement opportunities.

I have attached an overview of the campaign and would love the opportunity to discuss further with one of your team.

1017    On 27 August 2018, Ms Pantelidis emailed Mr Howcroft of PwC in the following terms:

I hope you are well and that you had a good holiday.

I would like to set up some time to talk to you over the next fortnight about getting involved in an Equal pay potential campaign. Attached is a campaign overview document.

Maurice Blackburn, is seeking to create an equal pay partnership to help change the frame on gender pay. We are inviting organisations and public ambassadors to join the partnership to drive real change.

WE’VE EARNED IT VICTORIA is a high-profile public awareness, engagement and action campaign, designed to disrupt complacency, and put pay equality firmly back on the public and government agenda. Launching in September 2018 it will encourage all Australians to stand together to demand their right to change. The campaign will include a grass roots PR and social media campaign, research insights, a microsite, case studies and the unveiling of Melbourne’s Fearless Girl statue. https://en.wikipedia.org/wiki/Fearless_Girl

We are also talking to other potential partners including Deloitte, AFL, News Limited, Cbus and Aust Post. I think we are looking at a max of 5-6 partners in total (other organisations will support the campaign but not have an opportunity to invest in Fearless Girl).

We are also talking to Sally [Capp] bc we will need to work with the City of Melbourne to find a home for the Fearless Girl statue.

Look forward to hearing from you.

1018    On 28 November 2018, Ms Sanger sent an email to representatives from Deloitte which under the heading “Become a Fearless Girl Partner” said “Fearless Girl Melbourne will be one of only a limited number of replicas that have been placed in major cities around the world” and “Your company name will feature on the plaque of this iconic artwork”.

1019    A draft version of the CEO management report prepared by Mr Varghese for the meeting of MBL’s board of directors on 5 February 2019 referred to the MBL campaign as the “Fearless Girl brand campaign” and a “program of work to build brand awareness”. There is no final version in evidence.

1020    A Cbus internal memorandum dated 25 February 2018, which is incorrectly dated, and titled “Fearless Girl Campaign” reviewed the benefits of the MBL campaign for Cbus and referred to “several branding opportunities” and potential media exposure. On 1 May 2019, an internal Cbus email referring to participation in the campaign stated that “[t]he opportunity for publicity and brand value from the partnership was significant for the expenditure involved. The partnership with News Corporation provided for good exposure through the Herald Sun”.

1021    Further, MBL commissioned OGB to prepare a campaign overview document titled “FEARLESS GIRL/EQUAL PAY CAMPAIGN” which included descriptions of the background, objectives, key messaging, approach (including strategic PR and social campaigns), assets, audience and timings for the campaign. MBL provided this document to HESTA and Cbus for consideration.

1022    Further, MBL commissioned and circulated to HESTA and Cbus a document titled “Media Strategy – Gender Pay Gap/Fearless Girl Campaign”. I will discuss this document in further detail in a moment.

1023    State Street (US) says that by engaging in this conduct, MBL has offered to provide and did in fact provide publicity services in the relevant field in class 35 to HESTA, Cbus and other potential sponsors of the MBL campaign under and by reference to the Fearless Girl trade mark.

1024    Further, State Street (US) says that in her oral evidence, Ms Hanlan conceded that the first invitation, the second invitation, the third invitation, the billboard, and the paid News Corp advertising in the form of the wrap-around cover and the Stellar advertisement were all materials intended to publicise the MBL campaign and to publicise MBL, HESTA and Cbus through the inclusion of their company logos on those materials, that is, to promote or advertise those particular brands as part of the campaign.

1025    I would reject the submissions of State Street (US).

1026    By advertising that it was bringing the replica to Melbourne, and by displaying the replica at the launch event, MBL was not using the words “Fearless Girl” in relation to services in class 35, such as “Publicity services in the field of public interest in and awareness of gender and diversity issues, and issues pertaining to the governance of corporations and other institutions”.

1027    Even by approaching potential stakeholders to be part of the campaign, MBL could not sensibly be described as having being involved with the provision of publicity services in class 35 under or by reference to the “Fearless Girl” mark. Rather, MBL sought partners for its gender equality and pay equity campaign which was making use of the replica. The reference to the “Fearless Girl Campaign” in the communications between partners should properly be read as a shorthand reference to that campaign.

1028    MBL, in short, was not in the business of providing publicity services, and has not done so by engaging in its public interest campaign or by involving partners in such a campaign.

1029    Now State Street (US) said that Ms Hanlan’s evidence indicated that “brand campaigns” are a regular part of MBL’s business activities, designed to position MBL as a “leading law firm, not just for individual plaintiff claims but in the area of social justice more broadly”.

1030    But the fact that MBL is a law firm does not negate the way in which it actively “[lobbied] corporate partners to get them on board”, offered them “money can’t buy amplification” to “leverage and promote [their] investment in Fearless Girl”, and then went on (in the case of Cbus and HESTA) to deliver those publicity services by designing and spearheading the MBL campaign with an integrated media strategy. Cbus’s internal documents about the “Fearless Girl Campaign” reflect the way in which it was pitched by MBL, as “an opportunity to leverage brand and media as a partner in [the] project”.

1031    Further, State Street (US) says that even if MBL was not providing services covered by the Fearless Girl trade mark, it was providing goods that were closely related, or services of the same description, to the registered class 35 services within the meaning of s 120(2)(c) and (d).

1032    But I agree with MBL that it is an exaggeration to suggest that, for example, the first invitation is a closely related good to publicity services in class 35. A law firm with an interest in social justice is not a provider of publicity goods or services. An invitation issued by a law firm to an event is not a good of the same description as publicity services.

1033    Further, let me at this point say something about the defence available under s 120(2). A person is not taken to have infringed a trade mark where that person establishes that using the alleged infringing mark as they did was not likely to deceive or cause confusion. In my view this defence is available here in respect of the s 120(2) claim in any event.

1034    Further, even if MBL was using the name Fearless Girl in relation to services of the same description or closely related goods, given the use of MBL’s own mark on all of the material complained about, its use was not likely to deceive or cause confusion.

1035    I agree with MBL that given the presence of its own “Maurice Blackburn Lawyers” mark, its use of the words “Fearless Girl” was not likely to deceive or cause confusion. MBL and State Street (US) are in different markets, offering different services and providing services to completely different clients.

1036    Further and contrary to State Street (US)’s position, the disclaimer used on some of those publicity materials, when compared in size and prominence to the use of the Fearless Girl trade mark, was visible and effective. So, the use of the words was not likely to deceive or cause confusion.

1037    Finally, I have dealt with the one example of so called confusion elsewhere in my reasons. I think little of it.

Class 36 – financial services

1038    I would also reject State Street (US)’s case concerning financial services.

1039    MBL was not engaged in the provision of services in class 36 such as “Funds investment”.

1040    Further, even if a use in connection with legal services could be construed, such services are not the services in classes 36 covered by the Fearless Girl trade mark. But in any event, there was no offering of “Fearless Girl” legal services.

1041    Now State Street (US) says in relation to financial services in class 36 that MBL authorised the use of the name “Fearless Girl” as a trade mark by Cbus and HESTA. HESTA and Cbus are of course financial institutions and they provide financial services.

1042    State Street (US) says that the MBL campaign was aimed at promoting HESTA’s and Cbus’ financial services through marketing and publicising their sponsorship and support of gender equality issues in the workplace.

1043    State Street (US) says that MBL used or authorised the use by HESTA and Cbus of the words “FEARLESS GIRL” in the MBL campaign in relation to the promotion of the services of HESTA and Cbus which were services in class 36, being “funds investment; financial investment advisory services… financial information” within the meaning of s 120(1) or which were services of the same description as those services in class 36 being superannuation fund management services, within the meaning of s 120(2)(c).

1044    Now I accept that superannuation fund management services are services which include funds investment, financial investment advisory services and financial information, or are at least services of the same kind as these services. I also agree that one would expect superannuation fund management services, and funds investment, financial investment advisory services and financial information to be provided through the same trade channels.

1045    Now HESTA and Cbus are financial institutions, and their ordinary business activities fall within “funds investment” in class 36.

1046    State Street (US) says that it follows that a publicity campaign designed in large part to promote their brands in the marketplace advertises their services. But both Cbus and HESTA were using the name “Fearless Girl” to refer to the replica in the context of the MBL campaign. There was no use as I have said “as a trade mark” by Cbus or HESTA.

1047    Of course Cbus and HESTA are companies in the financial services sector. But that does not of itself show the use of the name “Fearless Girl” as a trade mark in relation to financial services in class 36. Neither Cbus nor HESTA were using the name “Fearless Girl” as a badge of origin in relation to the same services, or services of the same description as the registered services. And simply because Cbus and HESTA are financial institutions does not mean they are using the Fearless Girl trade mark in relation to any services in the financial services sector. In my view they were not using the name of the replica as a badge of origin of their services.

(c)    Licensing

1048    MBL says that the artist in the art agreement by reason of the “no branding use” clause licensed or authorised MBL to use the trade mark.

1049    But State Street (US) makes what appears to me to be a compelling point that the artist was not the registered owner of the Fearless Girl trade mark in Australia and was not in a position to license or authorise any use of that trade mark in relation to the relevant services by MBL.

1050    Now I have already set out some key terms of the master agreement. It is appropriate that I set out cl 11(c) again which provides:

SSGA acknowledges that certain use of the Mark by Artist as the name of the Statue may be nominative fair use, or not a trademark use…but use of the Mark on a label, packaging, or advertising or promotional materials in connection with the sale, offer for sale, license, or distribution of reproductions of the Artwork, in any medium, other than as merely and only describing the Artwork as created by Kristen Visbal, shall be subject to the Trademark License Agreement annexed hereto as Exhibit D. For the avoidance of doubt, use of the Mark on labels, packaging, and advertising associated with jewelry, series of books, dolls, ornaments, and other merchandise will require a trademark sub-license agreement, but use of the Mark on art prints that display the Trademark to refer to the Statue does not.

1051    Clause 11(c) provides that use of the Fearless Girl trade mark on a label, packaging, or advertising or promotional materials in connection with the sale, offer for sale, license, or distribution of reproductions of the artwork, in any medium, “other than as merely and only describing the Artwork as created by Kristen Visbal” shall be subject to the trademark licence agreement.

1052    Now as I have mentioned, the trademark licence agreement is contained in the master agreement. The trademark licence agreement is a licence from State Street (US) to the artist for use of the Fearless Girl trade mark on certain terms and conditions. These terms and conditions relevantly included the following:

(a)    Clause 1(a) provided:

a)    SSGA is the exclusive owner of the FEARLESS GIRL trademark (the “Trademark”) in connection with goods and services that support women in leadership positions and the empowerment of women, and that promote public interest in and awareness of gender diversity and equality issues, and is the owner of U.S. Trademark Application No. 87/374,560 for the Trademark in connection with “promoting public interest in and awareness of gender diversity issues, and issues pertaining to the governance of corporations and other institutions” and “funds investment; financial management services; financial investment advisory services; financial administration of donor advised funds for charitable purposes; accepting and administering monetary charitable contributions; financial information.”

(b)    Clauses 2(a), (f) and (g) provided:

a)    Subject to the terms and conditions of this Trademark License Agreement, SSGA hereby grants to Artist an exclusive, royalty-free, worldwide, right and license to use the Trademark on and in connection with (i) three-dimensional copies of the Statue in various mediums and sizes in connection with the offer of goods for sale (“Merchandising”); (ii) two-dimensional copies of the Statue for Artist's portfolio, for “fine art” purposes, and (iii) two-dimensional copies of the Statue in various mediums and sizes in connection with Merchandising (collectively, the ”Licensed Products”). The Parties agree that Artist may sell art prints that display the Trademark to refer to the Statue and that such use of the Trademark does not fall under the Trademark License Agreement.

f)    The Parties further acknowledge and agree that use of the Trademark on a label, packaging, or advertising or promotional materials in connection with the sale, offer for sale, license, or distribution of reproductions of the Statue, in any medium, other than as merely and only describing the Statue as created by Kristen Visbal, shall be subject to this Trademark License Agreement. By way of illustration, but not limitation, use of the Trademark on labels, packaging, and advertising associated with two or three-dimensional merchandise such as jewelry, book series, stationery, dolls, and ornaments shall only be made pursuant to this Trademark License Agreement.

g)    It is understood and agreed that this license shall pertain only to the Trademark and the Licensed Products and does not extend to any other mark, product, or service of SSGA. Should Artist desire to use the Trademark in any manner not expressly licensed under this Trademark License Agreement, Artist shall make a written request to SSGA of the proposed specific use(s), and may thereafter use the Trademark, consistent with the terms and conditions herein, with SSGA’s prior written approval.

(c)    Clause 3(a) and (d) provided:

a)    Artist agrees to at all times maintain high quality standards, consistent with the reputation, goodwill and standards of SSGA.

d)    Artist shall ensure that the use of the Trademark shall not tarnish, dilute, weaken, blur or otherwise malign the Trademark and/or SSGA. SSGA shall have the right to prohibit any use, including any sublicensed use, of the Trademark on or in connection with the Licensed Products, which in SSGA’s sole discretion, is likely to harm or prejudice the distinctiveness, goodwill, reputation, or validity of the Trademark or harm, tarnish or dilute the SSGA brand or SSGA’s high-quality reputation.

(d)    Clause 4 provided:

Artist may grant sub-licenses for use of the Trademark on and in connection with the Licensed Products with the prior express written consent of SSGA. All third-parties authorized by Artist, directly or indirectly, to manufacture, sell or distribute a Licensed Product shall enter into a trademark sub-license agreement, which shall be approved in writing by SSGA or its counsel prior to execution.

(e)    Clause 5 provided:

The Parties will share information and cooperate with each other concerning third party acts of trademark infringement, and Artist shall notify SSGA when she becomes aware of infringement or misuse of the Trademark

(f)    Clause 7 provided:

Artist shall not assign or transfer this Trademark License Agreement, or any of her rights hereunder without SSGA’s prior written consent, other than transfer to a natural person heir upon death of the Artist. …

1053    Now as to cl 11(c) of the master agreement, State Street (US) acknowledges that certain uses of the Fearless Girl trade mark by the artist “as the name of the Statue may be nominative fair use, or not a trade mark use”, for example, “the Fearless Girl statue by Kristen Visbal” or “the Fearless Girl statue – NYC”. But cl 11(c) of the master agreement specifically limits acceptable nominative fair use to use of the mark “by the Artist as the name of the Statue”. The examples provided of the only permissible nominative uses in the master agreement are uses by the artist herself to describe the original statue commissioned by State Street (US) in New York and include the word “statue” after the trade mark. Accordingly, it seems to me that all other types of use were not to be considered by the parties in the contractual sense as nominative fair use.

1054    In my view, cl 11(c) of the master agreement cannot assist MBL, HESTA or Cbus. It does not amount to support, nor a licence or authority to the artist to authorise, MBL, HESTA or Cbus, to use the Fearless Girl trade mark in relation to the replica or the MBL campaign.

1055    Further, MBL is unable to rely on the trademark licence agreement given that it is a licence for use of the trade mark by the artist. Further, there was no efficacious sub-licence. Such a sub-licence required the express written consent of State Street (US), which had not been sought or given by State Street (US). In order to be valid, it would also have required MBL, HESTA and Cbus to have entered into a trade mark sub-licence agreement approved by State Street (US) prior to execution. But no such trade mark sub-licence agreement was entered into.

1056    Accordingly, I reject MBL’s case on this aspect. There was no relevant and efficacious sub-licence. Moreover, the nominative fair use provision did not in any event cover MBL’s, HESTA’s or Cbus’ use in relation to the MBL campaign.

(d)    Defence under s 122(1)(b)(i)

1057    The inapplicability of the nominative fair use provision in the master agreement is one thing. But the availability of statutory defences is another matter.

1058    Section 122(1)(b)(i) provides:

(1)    In spite of section 120, a person does not infringe a registered trade mark when:

(b)    the person uses a sign in good faith to indicate:

(i)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services;

1059    In my view, MBL’s use of the Fearless Girl trade mark was in good faith to indicate the kind, quality, intended purpose or some other characteristic of the replica, being its name, and that therefore the defence in s 122(1)(b)(i) applies. Let me elaborate.

1060    For such a defence, the use must be in good faith. This requires the person or business using the trade mark to act honestly and with no ulterior motive, that is, a motive other than purely for the purpose of describing the character or quality of its goods.

1061    Now a lack of good faith may be found where the person acts in a deliberate manner to take advantage of another party’s reputation. Further, if a person does not take steps that an honest and reasonable person would take to ascertain the ability to use a trade mark, and has in effect taken a risk, then they are not acting in good faith. Good faith in s 122 is properly interpreted as requiring reasonable diligence to ascertain that a chosen name does not conflict with a registered trade mark.

1062    Now State Street (US) says that the evidence is replete with indications that MBL was not acting in good faith when it used the Fearless Girl trade mark to offer and provide the relevant publicity services including as the brand of the MBL campaign itself (in class 35) as well as to market HESTA’s and Cbus’s financial services (in class 36) by reference to the MBL campaign and the Fearless Girl trade mark.

1063    State Street (US) says that MBL did not use the Fearless Girl trade mark purely for the purpose of description, that is, as the name of the artwork. It says that MBL had an ulterior motive for use of the mark, namely to “free ride” on, or take advantage of, the success and reputation of State Street (US)’s valuable Fearless Girl campaign, and to “trump” State Street (US) by unveiling the replica by reference to the mark in Australia before State Street (US) had an opportunity to do so. In fact, it says that MBL actively promoted to potential co-sponsors the publicity and brand value that would be generated for them by the MBL campaign by reference to the enormous success of the statue and the Fearless Girl campaign, and the ability to tap into and trade off its established narrative. In addition, it says that MBL was aware from the outset of State Street (US)’s ownership of the Fearless Girl trade mark and such knowledge is a relevant factor when considering if the requirement of good faith has been met.

1064    It says that Ms Hanlan confirmed that in seeking the insertion of the exclusivity clause in the art agreement, her intention was to secure exclusivity in relation to Fearless Girl for Australia and further, to ensure that MBL, if it could, would unveil before anyone else including State Street (US) in Australia.

1065    State Street (US) says that this conscious and deliberate intention to take advantage of the established reputation and goodwill of Fearless Girl and the Fearless Girl campaign while simultaneously trying to secure exclusivity for MBL in relation to Fearless Girl for Australia (at the expense of State Street (US)) is redolent of bad faith. It says that it was not State Street (US) that was trying to inappropriately secure exclusivity and shut down usage of the artwork in Australia. In the circumstances, it says that I should find that MBL’s use of the Fearless Girl trade mark was not use in good faith.

1066    Further, it says that despite knowledge of State Street (US)’s trade mark rights, MBL does not appear to have taken the most basic steps to ensure that its use of the Fearless Girl trade mark did not impinge upon State Street (US)’s rights in the mark.

1067    Further, it says that even if MBL took reasonable steps to ascertain its ability to use the mark, with MBL and Mr McDonald spending months negotiating the art agreement with the artist and Ms Wolff, State Street (US)’s trade mark rights are derived from the Act, not the art agreement.

1068    Further, it says that even if MBL relied on any infringement advice from either Mr McDonald or Ms Wolff during those negotiations, this does not necessarily establish good faith.

1069    Further, State Street (US) says that when Mr McDonald formed the conclusion that State Street (US)’s trade mark registration would not affect MBL or the co-sponsors, he had not been provided with (nor did he ask for) any mock-ups, images or any promotional material which would illustrate how the words were proposed to be used. He had no details for instance, of the font, the colour, the size, positioning or relative prominence of the words “FEARLESS GIRL” on the website, promotional materials, advertisements or any other more specific details of the purpose, nature or context of use. It says that Mr McDonald’s evidence that he was able to make a definitive assessment of whether the use of the words “Fearless Girl” would amount to trade mark use is not maintainable. It says that the assessment was made in a vacuum and ignored the matters that one needs to have regard to in determining if there is use as a trade mark.

1070    Further, it says that based on the description of the relevant services alone, MBL and Mr McDonald should have been alert to the potential risks associated with the MBL campaign.

1071    In these circumstances, it says that commercial diligence should have required them to make appropriate further enquiries and conduct more detailed investigations to determine whether the particular forms of use of the words “Fearless Girl” contemplated for the MBL campaign would actually infringe State Street (US)’s registered trade mark.

1072    Further, State Street (US) says that, despite negotiating the art agreement for months, MBL did not ultimately comply with subclauses (1) and (2) of the “no branding use” clause in its use of the Fearless Girl trade mark. Nor did that use conform with the limitations described in Ms Wolff’s letter of 13 February 2019 (AEST) concerning the permitted use of the mark and the artwork. This further underscores the absence of good faith.

1073    Accordingly, it says that the use of the Fearless Girl trade mark in the above circumstances was not use in good faith within the meaning of s 122(1)(b)(i).

1074    But in my view the defence is open to MBL.

1075    In my view, MBL by referring to the replica by its name, “Fearless Girl”, was using a sign in good faith to indicate a characteristic of the goods, being the name of the artwork. That is, a key characteristic of the replica is its very name, “Fearless Girl”.

1076    Further, MBL took steps that an honest and reasonable person would take to ascertain the ability to use a trade mark and at all times acted in good faith.

1077    MBL spent months negotiating the art agreement with the artist and Ms Wolff and much of the debate centred around the “no branding use” clause. MBL was careful and diligent to ensure its use was not an infringement of State Street (US)’s registered rights, and received assurances from the artist and Ms Wolff accordingly.

1078    Further, MBL’s campaign was conducted in good faith and was not an attempt to obtain some strategic advantage from State Street (US). Rather, MBL’s campaign was a social or political campaign intended to promote, in good faith, workplace gender equality and in particular equal pay.

1079    Further, there is no evidence to suggest that MBL believed consumers might be confused by its use of the name. There has been no questionable failure by MBL to explain its choice of words. Indeed, the name of the artwork was the only correct way to describe the replica. It would have been inappropriate and possibly misleading to choose a different name for it.

1080    Further, as to Ms Hanlan’s evidence about a desire to tap into the established narrative around Fearless Girl, this was not a desire to tap into some narrative around State Street (US) and its association with the New York statue. Rather, the established narrative around the statue was in relation to gender equality. This does not display a lack of good faith.

1081    Further, Ms Hanlan dealt with the artist on the understanding that she was entitled to create replicas of Fearless Girl. Seeking exclusivity in the art agreement was not indicative of a lack of good faith, rather it was driven by Ms Hanlan’s desire to do her job properly given MBL’s investment in the replica.

1082    Further, Mr McDonald was able to make a reasonable assessment of whether the use of the words Fearless Girl would amount to trade mark use. He concluded and advised otherwise.

1083    The s 122(1)(b)(i) defence has been made out. I would similarly say this concerning HESTA and Cbus to the extent necessary. They could rely upon the inquiries made by MBL and the advice given to MBL by the artist, Ms Wolff and also Mr McDonald.

(e)    Other matters

1084    There is one other point raised by State Street (US) concerning whether MBL, HESTA and Cbus were joint tortfeasors. State Street (US) also asserts trade mark infringement claims against MBL based on joint tortfeasorship. It says that based on the manner in which MBL conducted the MBL campaign, including inviting HESTA and Cbus into the campaign as co-sponsors, encouraging and inducing them to engage in the acts they engaged in, and providing the means for doing so via the campaign services and publicity materials, there was the necessary common design to render MBL liable as a joint tortfeasor for the acts of HESTA and Cbus. But this conclusion fails for the want of a foundation. No infringement or tort has been established concerning HESTA or Cbus.

COPYRIGHT INFRINGEMENT

1085    Let me begin by saying something about the legislative provisions.

1086    The New York statue was created in late 2016 and early 2017 by the artist, who is a US citizen. It is an artistic work within the meaning of s 10(1) of the Copyright Act 1968 (Cth).

1087    Copyright in an original artistic work subsists in the author of that work where that person is an Australian citizen or a person resident in Australia (s 32).

1088    By operation of reg 4 of the Copyright (International Protection) Regulations 1969 (Cth) this protection extends to artistic works first published in another country that is party to a relevant treaty or convention, or made by a citizen or resident in such a country. This includes the United States of America. Moreover, for the purposes of this proceeding s 126 of the Act deems that copyright subsists in the New York statue and that the artist is the owner where this is not disputed by MBL.

1089    Now s 13(1) provides that an act comprised in a copyright is any act that the owner of the copyright has the exclusive right to do. In this respect, s 31(1)(b) provides that the owner of the copyright in relation to an artistic work has the exclusive right to do, inter-alia, all or any of the following acts:

(i)    to reproduce the work in a material form;

(iii)    to communicate the work to the public; …

1090    So far as s 31(1)(b)(i) is concerned, s 14(1)(b) provides that a reference to a reproduction of a work shall be read as including a reference to a reproduction of a substantial part of the work. Section 21(3) provides that an artistic work shall be deemed to have been reproduced:

(b)    in the case of a work in three-dimensional form – if a version of the work is produced in a two-dimensional form;

and the version of the work so produced shall be deemed to be a reproduction of the work.

1091    So far as s 31(1)(b)(iii) is concerned, s 10(1) provides definitions for “communicate” and “to the public” in the following terms:

communicate means make available online or electronically transmit (whether over a path, or a combination of paths, provided by a material substance or otherwise) a work or other subject-matter, including a performance or live performance within the meaning of this Act.

to the public means to the public within or outside Australia.

1092    The act referred to in s 31(1)(b)(iii) has two limbs, first, “make available online”, which includes making a file accessible over the internet and, second, “electronically transmit”, which includes the transmission of a file.

1093    The exclusive rights under ss 31(1)(b)(i) and (iii) include the exclusive right to authorise another person to do those acts, namely, to reproduce the work or to communicate the work to the public (s 13(2)).

1094    Further, and more generally, copyright may be assigned or licensed, including exclusively. An “exclusive licence” is defined in s 10 as a licence in writing signed by or on behalf of the owner or prospective owner of copyright, “authorizing the licensee, to the exclusion of all other persons, to do an act that, by virtue of this Act, the owner of the copyright would, but for the licence, have the exclusive right to do …”.

1095    Further, as to the rights of an exclusive licensee, s 119(a) provides:

Except against the owner of the copyright, the exclusive licensee has the same rights of action as he or she would have, and is entitled to the same remedies as he or she would be entitled to, by virtue of section 115 or 115A if the licence had been an assignment …

1096    I will say something further about s 119 and s 120 relating to joinder in a moment.

1097    I should also note that in an action brought by the exclusive licensee, s 121 provides that a respondent has available against such a licensee any defence that would be available “if the action had been brought by the owner of copyright”.

1098    In terms of infringement of copyright in an artistic work, s 36(1) provides as follows:

Subject to this Act, the copyright in a literary, dramatic, musical or artistic work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright.

1099    Section 36(1) establishes two types of infringement, namely, infringement by doing in Australia an act comprised in the copyright or infringement by authorising the doing in Australia of an act comprised in the copyright, in each case without the licence of the owner of the copyright. Let me deal with the first type of infringement now. I will discuss the second type, being infringement by authorisation, in a moment.

1100    In determining whether a person has authorised the doing of an act for the purposes of s 36(1), s 36(1A) provides and requires:

In determining, for the purposes of subsection (1), whether or not a person has authorised the doing in Australia of any act comprised in the copyright in a work, without the licence of the owner of the copyright, the matters that must be taken into account include the following:

(a)    the extent (if any) of the person’s power to prevent the doing of the act     concerned;

(b)    the nature of any relationship existing between the person and the person who     did the act concerned;

(c)    whether the person took any reasonable steps to prevent or avoid the doing of     the act, including whether the person complied with any relevant industry     codes of practice.

1101    As to the concept of authorisation, it is sufficient for my purposes to refer to and apply what was said in University of New South Wales v Moorhouse (1975) 133 CLR 1 at 12 and 13 per Gibbs J.

1102    Now the factors in s 36(1A) neither purport to be exhaustive nor reflect any legislative intention to alter the meaning of the word “authorise” under the Act. Section 36(1A) partly codifies the principles in relation to authorisation which exist at common law.

1103    The question of authorisation is a factual question that must be decided by reference to all relevant circumstances.

1104    Let me say something about the contractual framework.

1105    It is convenient to again set out cl 3(a) of the master agreement which provides:

The Parties acknowledge and agree that SSGA shall have the exclusive right, pursuant to a license set forth in Exhibit A hereto, to display and distribute two-dimensional copies, and three-dimensional Artist-sanctioned copies of the Artwork to promote (i) gender diversity issues in corporate governance and in the financial services sector; and (ii) SSGA and the products and services it offers. Notwithstanding, Artist is free to discuss issues involving Gender Diversity Goals in connection with the Artwork, provided the Artwork is not used to promote any third party.

1106    The term “Artwork” is broader than the New York statue. In the preamble, “Artwork” is defined as “the work of visual art that is embodied by the Statue” and “Statue” is defined in the preamble as “the original bronze statue” commissioned by State Street (US) for International Women’s Day “which is now known as the ‘Fearless Girl’”.

1107    Clause 1(a) of the copyright licence agreement provides:

Artist hereby grants to SSGA a royalty-free, irrevocable, assignable, worldwide, unencumbered, and exclusive right, license and privilege to, in connection with (A) gender diversity issues in corporate governance and in the financial services sector; and (B) SSGA and the products and services SSGA offers and/or will offer at any time after the Effective Date: (i) create, use, display and distribute two-dimensional copies of the Artwork and Statue, in any medium now known or hereafter developed; (ii) create, use, display and distribute three-dimensional copies of the Artwork and Statue, in any non-physical medium now known or hereafter developed including, but not limited to holograms and virtual reality; and (iii) display and distribute three-dimensional, physical copies of the Artwork in the form of statuettes and/or mini replicas that are sanctioned by the Artist. For the avoidance of doubt, the Parties agree that Artist is free to discuss issues involving Gender Diversity Goals in connection with the Artwork, provided the Artwork is not used to promote any third party, and that copies of the Artwork are not given to a corporate entity or financial institution, pursuant to the terms of the Master Agreement between the Parties entered into as of the date hereof.

1108    Clause 1(b) of the copyright licence agreement provides:

Artist has not and will not during the term of this Copyright License Agreement, grant the rights described herein as granted to SSGA to any third party.

1109    By these terms State Street (US) has the exclusive licence relating to two-dimensional copies of the artwork in connection with gender diversity issues in corporate governance and in the financial services sector, and in connection with State Street (US) and its products and services. And as I have indicated, pursuant to s 119 State Street (US) as the exclusive licensee has standing to sue for infringement within its scope of exclusivity. Now under s 120 State Street (US) needed leave to so sue unless the artist was made a party, which joinder has not occurred. But I granted it leave to proceed with its copyright claims without joining the artist.

1110    At this point I should deal with a construction question, but noting that clause 17(e) of the master agreement provides that the agreement is “governed by the substantive laws of New York without regard to and exclusive of any conflict of law rules”. Now the parties before me agreed that Australian common law principles of contractual construction should be utilised in construing the terms of the master agreement as they were not functionally different to New York law. Accordingly, I did not need to receive evidence on New York law.

1111    A question that arises is whether the copyright licence set out in clause 1(a) of the copyright licence agreement is limited because the wording of the clause stipulates a conjunctive operation between limbs (A) and (B). Another question arises as to whether internally limb (A) operated conjunctively and not disjunctively.

1112    In my view the proper construction of the clause is as follows. The artist granted State Street (US) a worldwide, exclusive licence to create, use, display and distribute two-dimensional copies of the artwork and the statue in connection with:

(a)    gender diversity issues in corporate governance;

(b)    the financial services sector; or

(c)    itself and the products and services it offers or will offer at any time after the effective date.

1113    The three elements of the exclusive licence are separate so that the clause is to be read disjunctively. Gender diversity issues are only relevant to the first element. That is, there is an exclusive licence to use two-dimensional copies of the artwork and statue in the financial services sector or in connection with itself and its products and services, irrespective of gender diversity issues. I say this for the following reasons.

1114    First, although the syntax may be infelicitous based on inclusion of the word “in” before the phrase “the financial services sector”, the clause has to be read as a whole. Properly construed, it means that the licence is “in connection with” “gender diversity issues in corporate governance”, “the financial services sector” or “SSGA and the products and services SSGA offers”.

1115    Second, it would not make commercial sense for the licence to be limited to the extent that State Street (US)’s uses involve “gender diversity issues in corporate governance” or “gender diversity issues in corporate governance in the financial services sector”.

1116    Third, reading the clause as a whole, regard has to be had to the artist’s carve out to discuss issues involving gender diversity goals in connection with the artwork provided “the Artwork is not used to promote any third party, and that copies of the artwork are not given to a corporate entity or financial institution”. The need for the carve out is apparent as otherwise it would cut directly into the exclusive licence granted to State Street (US), which is a corporate entity and financial institution.

1117    Fourth, when construing the clause, given that it is part of an exhibit to the master agreement, provisions of that agreement need to be considered. Clause 3(a) of the master agreement refers to the exclusive right granted to State Street (US) pursuant to the copyright licence agreement. Clause 3(b) provides that all uses not licensed to State Street (US) are reserved to the artist, subject to the restrictions set out in various clauses, including clause 7. Clause 3(c) provides that the display of the artwork in photographs or holograms by State Street (US) in connection with State Street (US) marketing communications or otherwise shall not be considered use of the artwork as a logo. The sale, licence or distribution of the artwork referred to in clause 7(c)(ii), which does not constitute pre-approved use, is in connection with gender diversity issues in corporate governance or in the financial services sector. That again indicates that the gender diversity issues requirement is limited to corporate governance and is not also linked to the financial services sector.

1118    Fifth, cl 11(b) of the master agreement acknowledges that State Street (US) is the exclusive owner of the Fearless Girl trade mark. Clause 11(c) provides that use of the Fearless Girl trade mark is governed by the trademark licence agreement. Importantly, the Fearless Girl trade mark is registered in class 35 for publicity services in and “… awareness of gender diversity and diversity issues, and issues pertaining to the governance or corporations and other institutions” and separately in class 36 for “Funds management; financial investment advisory services…”.

1119    Let me now turn to some relevant facts.

1120    MBL admits the following acts by it which constituted reproduction and/or communication to the public of a substantial part of the artwork:

(a)    The Instagram post on 7 February 2019 which contained a reproduction of a two-dimensional image of the artwork and stated: “Fearless Girl is coming to Australia! We’re proud to be bringing this iconic symbol of gender equality to @federationsquare, in the lead up to International Women’s Day, along with our partners @hesta.super and Cbus Super. #fearlessgirl #IWD2019”.

(b)    The tweet on 6 February 2019 which contained a reproduction of a two-dimensional image of the artwork and stated: “Artist Kristen Visbal has been commissioned to make a new Fearless Girl statue for Australia. We’re proud to bring this iconic symbol of gender equality, with partners @HESTAsuper @CbusSuperFund to @FedSquare for International Women’s Day. #fearlessgirl #IWD2019”.

(c)    The LinkedIn post on 6 February 2019 which contained a reproduction of a two-dimensional image of the artwork and stated: “Fearless Girl is coming to Melbourne. The artist Kristen Visbal has been commissioned to make a new statue for Australia. We’re proud to be bringing this iconic symbol of gender equality to Fed Square Pty Ltd for International Women’s Day, along with our partners HESTA, Cbus Super Fund. #fearlessgirl #IWD2019”.

1121    In addition, MBL admits that the first and second invitations to the launch event contained a reproduction of a two-dimensional image of the artwork and featured the MBL, HESTA and Cbus logos with the words “Australia’s own Fearless Girl is here!”. As I have indicated, two-dimensional copies of the three-dimensional artwork are deemed to be reproductions for the purposes of the Act.

1122    Further, it is admitted that at the launch event a two-dimensional image of the artwork was displayed on a large electronic billboard at Federation Square by the operators of Federation Square. That act comprised a reproduction of the artwork.

1123    Moreover, it is admitted that subsequent to the launch event, on 2 March 2019 and 10 March 2019, a two-dimensional image of the artwork was published in the wrap-around cover and the Stellar advertisement by News Corp. These were reproductions of the artwork.

1124    Moreover, it is not in doubt that MBL authorised the acts of reproduction by Federation Square and News Corp.

1125    Now MBL does not dispute that it was not licensed by State Street (US) to do the acts of reproduction and communication to the public, and the authorising of the said acts of reproduction. Rather it says that it did not infringe State Street (US)’s exclusive licence rights because they were not acts done in connection with the exclusive uses and therefore did not require licence by State Street (US).

1126    Contrastingly, State Street (US) says that the nature and character of MBL’s campaign confirms that the acts were done in connection with gender diversity issues in corporate governance and in the financial services sector within the scope of the exclusive licence rights of State Street (US).

1127    Further, State Street (US) says that media interviews conducted by MBL’s representatives at the time of publication of the said social media posts confirm the nature of the “fight for gender equality” campaign by MBL via its use of the two-dimensional images of the artwork. In an article dated 7 February 2019, MBL’s CEO was quoted as saying:

Fearless Girl will be a reminder to Australian workplaces that we must keep up the fight for gender equality, including by tackling entrenched pay gaps, increasing the number of women in leadership positions, and providing flexible work environments.

1128    State Street (US) says that it was also illustrated by the billboard at Federation Square that stated: “FEARLESS AGAINST ALL ODDS!” alongside the “HESTA”, “Cbus” and “We Fight for Fair” trade mark. That billboard promoted the launch event, during which the artist made speeches in which she referred to the issue of gender diversity in corporate governance, referred to studies relating to gender diversity in the financial services sector, and promoted MBL, HESTA and Cbus.

1129    Further, State Street (US) says that the wrap-around cover and the Stellar advertisement reproduced images of the artwork and contained the logos of MBL, HESTA and Cbus, two of which were financial institutions. In the context of the campaign as a whole, State Street (US) says that it is apparent that these reproductions were also acts subject to State Street (US)’s exclusive rights in the two-dimensional image of the artwork.

1130    State Street (US) says that each of the pleaded acts of reproduction and communication to the public were acts done within the scope of its exclusive licence. But in my view the alleged acts of MBL do not fall within the scope of State Street (US)’s exclusive licence.

1131    Each of the social media posts, invitations, billboard and wrap-around cover and Stellar advertisement do not refer to gender diversity issues in corporate governance or the financial services sector at all.

1132    Rather:

(a)    MBL’s social media posts refer to “this iconic symbol of gender equality”;

(b)    MBL’s first and second invitations refer to “the fight for gender equality”;

(c)    MBL’s third invitation refers to “the fight for gender equality and equal pay”;

(d)    HESTA’s social media posts refer to a campaign for gender equality and equal pay;

(e)    Cbus’ tweet refers to “[Fearless Girl’s] message of equality”;

(f)    Cbus’ LinkedIn post refers to “diversity and equality”;

(g)    the electronic billboard in Federation Square made no reference to gender diversity at all;

(h)    the wrap-around cover refers to the “pursuit of workplace equality and equal pay”; and

(i)    the Stellar advertisement refers to the “pursuit of workplace equality”.

1133    Moreover, the presence of the company names HESTA and Cbus cannot alone make the reproduction “in connection with financial services”. Further, the comments at the launch event did not turn the earlier or later instances of alleged infringement into being “in connection with gender diversity issues in corporate governance”.

1134    In my view, State Street (US)’s case fails at this level.

1135    Let me now turn to another matter and deal with the question of alleged authorisation by MBL of HESTA and Cbus. State Street (US) says that to the extent that HESTA and Cbus engaged in acts of infringement of copyright in the artwork, they were authorised by MBL (see ss 36(1) and 36(1A)).

1136    State Street (US) says that HESTA and Cbus engaged in two acts of infringement in connection with MBL’s campaign by reproducing and communicating to the public two-dimensional images of the artwork.

1137    On 6 February 2019, LinkedIn posts were published by HESTA, Ms Debby Blakey (HESTA’s CEO), and Ms Sonia Sawtell-Rickson (HESTA’s CIO) which all included two-dimensional images of the artwork.

1138    Further, on 6 February 2019, Cbus published a tweet and a LinkedIn post, which both included two-dimensional images of the artwork.

1139    State Street (US) says that each of these instances constituted reproductions and/or communications to the public of the whole of a substantial part of the image of the artwork. State Street (US) says that they were not licensed by State Street (US) or the artist and therefore constituted infringements.

1140    Now it may be accepted that such acts constituted reproductions or relevant communications. But in my view they did not fall within State Street (US)’s exclusive licence rights.

1141    If one considers the HESTA posts from Ms Blakey, they referred to the campaign for gender equality and equal pay for the “women of Australia now and for the girls of tomorrow”. The HESTA separate post referred to “future generations to come”. Ms Sawtell-Rickson in her post said “let’s hope Fearless Girl shines a spotlight on gender pay inequality in Australia and motivates some much needed action”.

1142    None of this is fairly described as the stuff of State Street (US)’s rights.

1143    It is worth setting out the HESTA separate post:

1144    In my view it is fanciful to suggest that such postings were within State Street’s exclusive licence rights.

1145    Similar points can be made concerning the Cbus posts.

1146    The Cbus tweet on 6 February 2019 showed:

1147    The LinkedIn post showed the following:

1148    Now there is a reference to boardrooms, but clearly what was being referred to is gender diversity and equality broadly, not board positions or the finance industry.

1149    Further, although this was a representation concerning the New York statue on one view, this was not a representation made by MBL. It does not assist State Street (US) on the ACL case pleaded against MBL.

1150    In my view these posts did not come within State Street (US)’s exclusive licence rights.

1151    Now as to the question of authorisation, State Street (US) says that MBL encouraged those infringements.

1152    State Street (US) says that in January 2019 MBL was provided with a media strategy document that it had commissioned from OGB and in February 2019 circulated that document to HESTA and Cbus. The media strategy document included the following statements:

3. SOCIAL MEDIA (owned)

Fearless Girl

    Reveal – Content announcing the statue (time-lapse or strong photo).

    Free media – Posting of free media articles discussing the purpose of the statue.

    HONY [Humans of New York, an online publication] – Featuring the artist Kristen Visbal.

Gender pay gap content

Additionally, a piece of video content that speaks more broadly to the issue of the geder pay gap is being developed. This will run on Maurice Blackburn social channels around the same time as we launch Fearless Girl / in the lead up to and on IWD.

All content on social media will aim to raise awareness and support for the campaign with the CTA [call to action] being to share and help make pay equality a reality by 2020. Campaign partners will be invited to promote content on their channels. Influencers will also be used to help reach diverse audiences.

Channels:

-    Facebook

-    Twitter

-    LinkedIn

-    Instagram

Objectives:

-    Awareness

-    Mass Reach (through sharability)

Hashtags

-    #Fearlessgirl

-    #IWD #IWD2019

Handles

-    @WeFightforFair

1153    I am not sure where this takes State Street (US). The document was headed “Media Strategy – Gender Pay Gap / Fearless Girl Campaign”. And from the extract cited, HESTA and Cbus were being “invited to promote content” about the campaign identified under the heading “Gender pay gap content”. State Street (US)’s exclusive licence rights were not as to that.

1154    Now other parts of the document under the heading “Key Messages” referred to equal board representation, but the encouragement to HESTA and Cbus is more appropriately characterised as related to using social media concerning equal pay and equality generally in Australian workplaces. These were not in terms the subject of State Street (US)’s exclusive licence rights.

1155    State Street (US) says that MBL was an equal partner in sharing with HESTA and Cbus the costs of the wrap-around cover and the Stellar advertisement campaign with News Corp. And it says that MBL procured HESTA and Cbus to enter into the arrangements with News Corp. So, in early November 2018, Ms Hanlan and Ms Patelidis sent emails to representatives of Cbus and HESTA that included the following statement:

For your consideration I’ve attached an advertising/sponsorship media package that would require additional $ investment as part of the amplification of this event – although this is additional spend it also represents a ‘money can’t buy’ amplification strategy that will effectively promote and leverage your investment in Fearless Girl.

This amplification opportunity includes a full wrap of the Herald Sun, 4 x advertising spots in sport, business and weekend sections of paper, full page advertisement in Stellar Magazine, advertising on digital platform and social platforms…

1156    Now all of this may be so, but I am not sure that it amounts to the conclusion for which State Street (US) contends, namely, that MBL granted or purported to grant to HESTA and Cbus the right to do the infringing acts and thereby authorised those acts.

1157    Now State Street (US) also says that the application of the factors under s 36(1A) support a finding of authorisation by MBL.

1158    First, it says that MBL had the power to prevent HESTA’s and Cbus’ conduct (s 36(1A)(a)). It says that MBL recruited HESTA and Cbus to participate in the MBL campaign, entered into arrangements with HESTA and Cbus to promote the MBL campaign, including via a shared formal engagement with News Corp, and shared media strategies with HESTA and Cbus in relation to strategies to promote the campaign. State Street (US) says that if MBL had not taken those steps, HESTA and Cbus would not have engaged in the relevant acts. And State Street (US) says that at all times MBL could have ceased supporting the MBL campaign and the acts of HESTA and Cbus would not then have taken place. Now in my view each of these propositions may be accepted so far as they go.

1159    Second, State Street (US) says that MBL had a commercial relationship with HESTA and Cbus (s 36(1A)(b)). Sponsorship agreements between MBL and HESTA/Cbus were circulated in advanced draft, although it does not appear that they were ever signed. But State Street (US) says that the drafts included terms relating to restrictions on branding use which reflected the restrictions contained in the art agreement. In those draft