Federal Court of Australia

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

ORDERS

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 asked “may 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.

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:

I’ll 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: