IP News

While many viewed the sculpture as a cause célèbre, Arturo Di Modica was none too pleased. The artist who created Charging Bull, who also owns the copyright and trademark in the work, claimed that Fearless Girl changed the message of his piece in violation of his intellectual property rights, including his moral rights as an artist. In his view, Charging Bull, created some thirty years ago after the stock market crashes in the 1980s (and installed, guerrilla style, without permission by the artist himself) no longer carries an optimistic message (as was the artist's intent) when it was viewed in the context of Fearless Girl. Lawyers for Di Modica suggested that State Street had commissioned Fearless Girl as a site-specific work that was in part dependent on Charging Bull to give it context and meaning, and that State Street had improperly commercialized Charging Bull without Di Modica's permission. While Di Modica initially threatened legal action, he never followed through.

Now, some two years later, Fearless Girl is raising additional intellectual property questions. State Street took Visbal to court over what it characterize as a violation of their copyright and trademark rights in the sculpture. State Street claims that Visbal violated the agreements between the parties when she began making and selling replicas of the work to other entities worldwide. In a Feb. 14, 2019 Complaint State Street alleges that it hired Visbal to create the work based on concepts and designs that it had developed with its own agents and consultants. See, State Street Global Advisors vs. Visbal, Kristen, Docket No. 650981/2019, Dkt. No. 2 (N.Y. Sup Ct. Feb. 14, 2019). The Complaint describes generally the message of female empowerment that the sculpture was meant to convey, as well as State Street's efforts and commitment in promoting that message. State Street alleges that Visbal weakened the message of the work by selling unauthorized copies for profit, in breach of multiple agreements between the parties. It further claims that her unauthorized buyers misused the Fearless Girl image, as well as State Street's trademark in and to the work. State Street identifies multiple, putatively unlicensed versions of the work which Visbal allegedly sold, one to an Australian buyer, Maurice Blackburn, a plaintiff class-action law firm, another two to Australian superannuation funds, and yet another to the owner of a hotel is Oslo, Norway. Specifically the Oslo version was installed on March 8, 2018 (International Women's Day), and images of the work were widely shared on social media accounts promoting the hotel. In State Street's view, the use of these replicas falsely suggested that it was somehow associated with these other entities.

The Complaint also alleges that in January 2019, Visbal brought a replica of Fearless Girl to the Women's March in Los Angeles. While Visbal had previously requested State Street's permission to bring the work to the March (as she was required to do pursuant to their agreement), she was denied. Visbal brought it anyway. State Street believes that these uses caused it to lose control over its reputation and trademark, and caused a general weakening of the Fearless Girl trademark and campaign. State Street claims that it has been trying to resolve these issues between the parties for some time, but that when it reached out its overtures were rebuffed. Accordingly, it brought claims against Visbal for: 1) Breach of the Master Agreement between the parties; 2) Breach of the Trademark License Agreement; 3) Breach of the Copyright License Agreement; and 4) Breach of the Implied Covenant of Good Faith and Fair Dealing. As relief, it requested that the Court compel Visbal to mediate their numerous disagreements, cure her ongoing breach, and that the Court award damages, including exemplary damages, costs and attorneys' fees, as well as grant State Street injunctive relief on all claims.

Visbal removed the case to the Southern District of New York on Feb. 25, 2019. See, State Street Global Advisors Trust Company v. Visbal, Docket No. 1:19-cv-01719 (S.D.N.Y. Feb 25, 2019). On March 7, 2019, on the eve of International Women's day, State Street obtained a temporary restraining order enjoining Visbal from completing a delivery or sale of the sculpture to a German buyer. The Court further enjoining Visbal from using an automated online sales form to sell reproductions of the work. A pretrial conference is currently scheduled for April 9, 2019.

The matter is still ongoing, but counsel for Visbal indicated to the press that the March 7 decision was “unfortunate” because the agreement between the parties allows Visbal to sell replicas, and also to discuss the parties' shared goals of gender diversity. Counsel further explained that Visbal's goal is to create replicas for public placement worldwide so that the public can stand by it and be inspired by its meaning. An admirable goal — and perhaps something that State Street did not foresee when it commissioned the work for its own use and promotion. As the case progresses it will be interesting to see the use and authorship issues discussed in greater detail between the parties (provided of course that the parties do not settle).

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Christine E. Weller is a staff attorney in the Intellectual Property Department of Pepper Hamilton LLP, resident in the Philadelphia, PA office. She can be reached at [email protected].