Grossman LLP | <strong >Dispute Between State Street and Artist Over “Fearless Girl” </strong ><strong >Raises Myriad Questions About Contracts, Trademark, and </strong ><strong >Challenges Inherent in Commissioned and Public Art</strong >
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  • Dispute Between State Street and Artist Over “Fearless Girl” Raises Myriad Questions About Contracts, Trademark, and Challenges Inherent in Commissioned and Public Art
    The statue, titled Fearless Girl, created a sensation when it was first unveiled on International Women’s Day in 2017 in New York City.  It depicts a small girl standing defiantly, hands on hips; her placement at Bowling Green in lower Manhattan created the appearance that she was staring down the famous Wall Street charging bull statue.  The city originally permitted the statue to be installed at Bowling Green for a month, but then allowed the statue to be moved to a longer-term location outside the New York Stock Exchange.
    State Street Global Advisors, a financial asset management company, says it commissioned and owns the statue, and has made her a prominent symbol of what State Street says is its ongoing commitment to ensuring gender diversity on corporate boards.  But State Street is now embroiled in litigation with the artist who created the statue, Kristen Visbal.  The legal questions involved in the case serve as a case study about the complex issues that can arise with commissioned and public art projects.
    Litigation Focuses On The Allocation of Rights Between Artist And State Street
    State Street alleges that Visbal gave State Street certain rights related to the statue (as well as limited licenses with respect to the copyright and certain trademark rights in the phrase “Fearless Girl”), via three contracts: a Master Services Agreement, a Copyright License Agreement, and a Trademark License Agreement.  In general, State Street’s position is that the contracts prohibited Visbal from selling, licensing, or distributing copies of the artwork to any third party “to use in connection with gender-diversity issues in corporate governance or the financial services sector” without State Street’s approval—but Visbal has allegedly breached those agreements and violated State Street’s rights with respect to the statue.
    State Street initially filed in New York state court, but Visbal removed the case to federal district court.  (See S.D.N.Y. Docket No. 19-cv-01719.)  In its complaint, State Street alleges that it hired Visbal to sculpt Fearless Girl as part of its overarching campaign to encourage gender diversity on corporate boards.  It argues that Visbal is diluting the power of State Street’s message by selling unauthorized copies of the sculpture, in breach of her contractual obligations to State Street.  It alleges that these breaches deprive State Street of control over its own reputation and its Fearless Girl trademark, and weakens the goodwill associated with its Fearless Girl brand and campaign.  It also alleges that these unauthorized copies will confuse the public, who may believe that these other buyers (which include a plaintiffs’ law firm in Australia, who bought the work in partnership with two financial services firms and then donated to their home city of Melbourne) are somehow associated with State Street. 
    State Street further complains that Visbal sells smaller “statuettes” through her website, in a manner that allegedly does not adequately ensure that those sales will comply with the terms of her contracts with State Street; indeed, they provide a photographic example of a statuette that was apparently purchased by a different financial services firm for use at a corporate event.  State Street also cites an incident in which Visbal sought State Street’s permission to bring a replica to a Women’s March in Los Angeles; when State Street declined permission, Visbal went ahead with the plans anyway.  And, State Street adds, Visbal does not provide any attribution to State Street on any of the replicas or statuettes.
    State Street’s claims are centered on Visbal’s alleged breach of each of the three contracts.  It also alleges that Visbal has acted in bad faith, including by avoiding communication with State Street and withholding information about buyers of replicas; these allegations are, in part, aimed at showing that Visbal has acted “willfully” so as to entitle State Street to additional exemplary damages.  Separately, State Street has opened up a different front in the dispute, heading to Australia and suing the parties involved in the purchase of the replica now displayed in Melbourne.
    This spring, State Street initially failed to convince the Court to enjoin Visbal from attending the unveiling of the Melbourne replica.  But based on public comments she made during that event, the Court ultimately reevaluated the parties’ positions and issued a preliminary injunction, ordering Visbal to halt the delivery, sale, or transfer of a Fearless Girl replica to an undisclosed buyer or buyers in German, and to refrain from promoting that German replica.  The injunction also ordered Visbal to stop using her website’s automated sales form to sell statuettes.
    This summer, Visbal filed her answer to the complaint, arguing that State Street was seeking to give the parties’ contracts an onerously restrictive interpretation, effectively preventing her from reaping any economic benefit from Fearless Girl, notwithstanding that she remains the owner of the intellectual property in the work and gave State Street only limited licenses.  The complaint also pointedly seeks to highlight State Street’s purportedly mixed record on gender diversity, painting State Street’s campaign around Fearless Girl as an effort to deflect from past problems and improve the bank’s image.  She complains that she has not been given adequate attribution as the work’s creator, including on plaques in the original and new locations of the statue in New York, and further, that State Street had the statue refinished without her consent and without permitting her involvement, as she says she was entitled to do.  She also alleges that State Street has unreasonably withheld permission to sell or use replicas of the statue on a number of occasions, including in connection with non-profit work.  She brings several claims including breach of contract, but also tortious interference with one of the planned sales of a replica to a German buyer, as well as copyright infringement (arguing that State Street’s breaches should void the parties’ agreements). 
    This fall, the parties have been engaged in discovery.  State Street has also filed a motion to dismiss some of the artist’s counterclaims, as well as to strike some of the affirmative defenses advanced in her answer (in particular, those that make accusations of fraud).  The court has not yet ruled on that motion.  And in the meantime, State Street’s litigation in Australia continues (see here for a recent news story on that). 
    Separately, A Dispute Over Fearless Girl’s Former Neighbor, the Charging Bull
    As a side note, Fearless Girl’s original neighbor and adversary, the statue of a charging bull that has graced lower Manhattan since its installation in 1989, is also embroiled in its own controversy.  The artist, Arturo di Modica, is objecting to the city’s plans to relocate the statue to a new location outside the New York Stock Exchange.  The city says the new location will ameliorate the traffic and safety issues that are presented by fans who want to view and photograph the statue in its current location on a median strip.  The dispute has not ripened into active litigation, but potential issues implicated in the dispute might include examination of the terms of the parties’ initial contracts, and questions about whether the new location might create an apparent association with the stock exchange so as to give rise to a trademark claim by the artist.  There may even be a question about who actually owns the statue.
    Legal Tangles Over Commissioned and Public Art
    The bitter dispute between Visbal and State Street should serve as a cautionary tale for both artists who accept commission and for businesses that may commission works from artists.  As this case shows, artists and commissioning entities may start out with similarly positive goals, but it is of paramount importance to hammer out clear contracts allocating the rights between the parties.  Indeed, Visbal’s counterclaims allege that, at the time the statue was initially unveiled, generating substantial attention and acclaim, there was no written agreement between State Street and the artist.  Thereafter, the parties finalized the terms of their contracts, apparently each with the help of legal counsel, but the highly-publicized unveiling made it clear that the stakes were high – meaning that Visbal would want to ensure that she could continue to profit from her work, including by selling it to others, while State Street would want to ensure that they continued to reap the benefits of a strong association with the work.  The ensuing deterioration of the relationship in the face of these competing objectives has now created a curious public relations conundrum pointed out by at least one commentator; State Street, which initially sought to associate itself with the statue in order to position itself as an advocate for women, is now in a public court battle with a female artist over control of what has become a powerful symbol of gender equality.
    Likewise, the current controversies surrounding both Fearless Girl and the Charging Bull statue highlight some of the legal challenges that are often inherent in public art, and what rights an artist has after a work is installed in a public location—including how the artist will receive attribution, what sort of input they might have in future decisions about a work’s location, how future restoration should be handled, and more.  Again, clear contracting in advance can go a long way toward avoiding litigation down the road.   
    ATTORNEY: Kate Lucas
    CATEGORY: Public Art