Fearless in the face of bull: using Australian discovery in US litigation

State Street Global Advisors Trust Company v Maurice Blackburn Pty Ltd [2019] FCA 1464

(5 September 2019)

The first applicant (SSGA) is one of the largest exchange-traded funds management and asset management companies in the world and is based in the US.  SSGA also is a strong advocate of gender diversity in the corporate world.  As part of its gender diversity platform, SSGA had commissioned a bronze statue of a young girl in a defiant stance, which has now come to be known as the Fearless Girl statue.  The statue was originally placed in Wall Street facing off against Arturo di Modica’s famous Charging Bull bronze statue, but in 2018 was relocated so that it now faces the New York Stock Exchange.

The statue was commissioned in 2016 from the artist, Kristen Visbal.  By an agreement between Ms Visbal and SSGA, SSGA was granted certain exclusive rights in respect of the artwork embodied in the statue, and in particular to use it to promote gender diversity in corporate governance generally and to use it in the financial services sector.  Since the statue’s installation in New York in 2017, SSGA has incorporated references to and images of the Fearless Girl statue into its marketing and gender diversity initiatives, and is the proprietor of an Australian trade mark for FEARLESS GIRL.  By reason of these matters, the applicants claim to enjoy in Australia certain exclusive copyright, trade mark and reputational rights in respect of the statue and the FEARLESS GIRL mark, particularly in relation to gender diversity and corporate governance issues.

The respondents included the law firm Maurice Blackburn (MB) and industry superannuation fund Cbus.  SSGA claims that in January 2019, and without the consent of SSGA, MB entered into an agreement with Ms Visbal to buy a replica of the Fearless Girl statue.  The replica statue was unveiled at a launch event in February 2019 at Federation Square in Melbourne, at which Ms Visbal was a guest speaker.  Before, during, and following the launch event, MB engaged in various marketing activities promoting the statue in connection with MB’s own gender diversity initiatives.  Cbus contributed to the launch event and engaged in similar promotional activities.  Some of the marketing activities included MB and Cbus trade marks in conjunction with images of the replica.

The conduct of MB and Cbus prompted the applicants to bring proceedings against them for contraventions of the Australian Consumer Law, trade mark infringement, copyright infringement and the tort of interference with contractual relations.  In parallel, SSGA has initiated proceedings against Ms Visbal in the US for breach of contract (US Proceeding).

Documents have been produced by MB and Cbus as part of discovery, and pursuant to a subpoena issued to an advertising company.  Among those discovered documents are documents SSGA asserts are relevant to the US Proceeding, including: direct communications between the respondents and the artist or her lawyers (category 1); communications between the artist’s buyers or their agents concerning what the artist told them about the Replica and the permitted uses of it (category 2); and documents evidencing alleged infringing activities in Australia such as the sale of the replica, the launch event and the respondents’ marketing activities (category 3).  In the present interlocutory application, SSGA sought to be released from its implied Harman undertaking with respect to those documents so as to allow their use in the US Proceeding.

SSGA relied on a number of factors said to warrant its release from the Harman obligation.  It argued that all of the documents were relevant to an issue in the US Proceeding, being a proceeding to which SSGA was a party.  As at the date of SSGA’s interlocutory application, discovery in the US Proceeding had not been completed, and SSGA was required to complete certain steps by 21 October 2019; it wished to include the documents in its discovery.  Further, the artist had indicated that some of her emails may no longer be available as a result of her computer having been “compromised by unknown third parties”.  Additionally, the category 2 and category 3 documents were not ones that are likely to be in the artist’s possession, and would not otherwise be discovered in the US Proceeding as MB and Cbus are not parties.

A litigant seeking to invoke the Court’s discretion to release the litigant from the Harman obligation must demonstrate “special circumstances” that warrant a release from or modification to the obligation.  Those circumstances do not need to be “extraordinary”; they will “fairly readily be found where it is established that the use of documents discovered in a proceeding is reasonably required for the purpose of doing justice between the parties [to the present proceedings] in other proceedings”.[1]  Each case turns on its own facts.

His Honour observed at [81] that there was a “significant degree of commonality of factual issues between the proceedings”, and at [84] that it would be “undesirable” for the Court to otherwise conduct a “mini trial about the relevance or admissibility of material that may be sought to be tendered in the US proceeding”; that determination was a matter for the US Court.  But overall his Honour was satisfied that each of the documents “may illuminate matters” arising the in US Proceeding, and that each could be deployed for a “legitimate forensic purpose” in that proceeding.

MB and Cbus submitted that if the documents were to be released, that release should be deferred until after the trial of the Australian proceedings and after the artist had completed discovery in the US Proceeding.  In response to that suggestion, SSGA submitted that a delay would cause it prejudice in the US Proceeding, because it might be unable to rely on the documents or secure their admission into evidence at a later date.  On this question, his Honour observed at [93] (emphasis added):

It is all of course a question of balancing the interests of justice.  But contrary to SSGA’s assertion, I should give primacy to the interests of justice in the proceeding before me and the parties before me, rather than to prefer and prioritise SSGA’s collateral purpose.  Moreover, this is not a case where SSGA is an unwilling participant in the US proceeding.  It wielded that sledgehammer.  It can wear the consequences.  If there is any prejudice to it on any timing question, it is the author of its own misfortune.

In this case, however, his Honour found that the category 1 documents had higher relevance and probative value than the category 2 and 3 documents, and were more likely to be admissible in the US Proceeding.  Accordingly, his Honour was satisfied that the category 1 documents (recording direct communications involving the artist) were important to SSGA completing its non-expert depositions by 21 October 2019, and ought to be released immediately for that purpose.

MB and Cbus claimed confidentiality in respect of their respective discovered documents.  This was not, however, a barrier to SSGA’s application: SSGA accepted that grant of a release from the Harman obligation should be conditional upon it designating the documents as confidential when discovering them in the US Proceedings, and suitable protective orders could be made in those proceedings.  The respondents otherwise could not identify any prejudice that would arise should the documents be released.  Accordingly, his Honour ordered that SSGA be released from the Harman obligation for the category 1 documents, for the sole purpose of using them in the US Proceedings.

But relevance, establishing a “legitimate forensic purpose”, and the ability to preserve confidentiality were not enough to warrant the immediate release of the category 2 and category 3 documents.  His Honour observed at [14]:

Mr David Studdy SC for SSGA cleverly put me in the hypothetical past of how in the glory days I might have used these category 2 and category 3 documents if I had been so armed with them for the purposes of a firm but fair cross-examination.  He did not need much to persuade me that all of them could have been used.  Mr Colin Golvan QC for MB countered that I should not apply the lens of a hypothetical past Australian advocate, but rather the lens of a hypothetical future US trial attorney.  I tend to agree.  But having said that, I am not sure that the two lenses are so different when it comes to planning and performing a profitable cross-examination. 

His Honour concluded, however, that potential utility of the documents for cross-examination, or to tender them for a non-hearsay purpose or as business records, was not sufficient to justify their release at that stage.

[1] Australian Trade Commission v McMahon (1997) 73 FCR 211, 217 (Lehane J), quoted by Beach J at [7].

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