State Street Global Advisors Trust Company v. Visbal
- Gregory Woods
- 1:19-cv-01719
- U.S. District Court · Southern District of New York
- 9
In State Street v. Visbal, Judge Woods granted in part and denied in part reconsideration, leaving State Street’s summary-judgment loss on unclean hands intact.
State Street and Kristen Visbal; the ruling leaves Visbal’s unclean-hands defense available for resolution by a factfinder and does not grant State Street summary judgment on that defense.
What happened
State Street Global Advisors Trust Company v. Visbal concerns State Street’s request to revisit an earlier decision allowing Kristen Visbal’s unfair-conduct defense to proceed. State Street commissioned the “Fearless Girl” statue, which Visbal sculpted.
Judge Woods agreed that the earlier decision was wrong to rely on possible use of the statue’s logo because the relevant trademark covered only the words “Fearless Girl.” But the record also contained emails about possible merchandise using those words, and a jury could find that this conduct supported Visbal’s defense.
Judge Woods therefore granted in part and denied in part State Street’s reconsideration motion. State Street’s motion for summary judgment on Visbal’s defense remains denied, so the factual dispute was not resolved by the court at this stage.
The detailed version
- State Street Global Advisors Trust Company v. Visbal · No. 1:19-cv-01719
- Gregory Woods
- July 25, 2023
Background
State Street Global Advisors Trust Company commissioned the “Fearless Girl” statue, and Kristen Visbal sculpted it. In an earlier summary-judgment decision, the court denied State Street’s motion for summary judgment on Visbal’s “unclean hands” affirmative defense. That defense alleges that a plaintiff engaged in unfair conduct related to the relief it seeks.
The earlier decision relied in part on evidence that State Street may have used the “Fearless Girl” logo on merchandise. State Street moved for reconsideration, arguing that Visbal’s summary-judgment arguments focused on alleged copyright-related conduct and that the court should not have relied on the parties’ Trademark Agreement. State Street also argued that the agreement covered only the words “Fearless Girl,” not the logo.
Court’s Analysis
The court rejected State Street’s first argument. In deciding a summary-judgment motion, the court may consider the full record and is not limited to the particular legal theory presented by the parties. The court therefore declined to reconsider its decision on the ground that Visbal had not specifically relied on the Trademark Agreement in her briefing.
The court agreed with State Street’s second argument in part. The relevant trademark was solely the words “Fearless Girl,” so use of the logo by itself could not violate the Trademark Agreement or support Visbal’s unclean-hands defense.
However, the court found other evidence that could support the defense. State Street emails discussed producing items such as a key ring, notepad, and umbrella with “#FearlessGirl,” as well as State Street-produced “Fearless Girl merch” that could be offered through an internal marketplace. Drawing reasonable factual inferences in Visbal’s favor, a jury could find that merchandise containing the words “Fearless Girl” and a two- or three-dimensional reproduction of the statue violated the agreement’s exclusive license provisions.
The court also noted that State Street disputed ever completing a sale of merchandise that violated the agreement. Those disputes were factual questions for the factfinder, not questions the court could resolve on summary judgment.
Disposition
Judge Gregory H. Woods held that State Street’s motion for reconsideration was GRANTED IN PART and DENIED IN PART. The court corrected its prior reliance on the logo but adhered to its earlier decision denying State Street’s motion for summary judgment as to Visbal’s unclean-hands defense. The clerk was directed to terminate the reconsideration motion.
Read the full 9-page opinion on CourtListener, the free public archive maintained by the Free Law Project.