The Brazilian Superior Court of Justice holds that licensee must obtain rights holder consent to enforce intellectual property rights

The Brazilian Superior Court of Justice holds that licensee must obtain rights holder consent to enforce intellectual property rights

In a decision rendered on March 2, 2026, the Brazilian Superior Court of Justice (STJ) upheld a ruling of the Court of Justice of the State of Rio de Janeiro (TJRJ), which found that a licensed company lacked standing to independently enforce intellectual property rights, as it had failed to demonstrate authorization from the licensor, the rights holder, for that purpose. The case reaffirms that a license agreement, in and of itself, does not authorize the licensee to litigate without the consent of the rights holder.

The dispute involves three clearly defined parties: (i) the plaintiff, a clothing company licensed to use certain prints; (ii) the defendant, a retail company accused of copying garments; and (iii) the print supplier, the holder of the intellectual property rights, which did not join the claim as a co-plaintiff. The plaintiff alleged unfair competition and copyright infringement based on an exclusivity agreement for the use of the prints.

At first instance, the claims were upheld. On appeal, however, the TJRJ reversed the decision and dismissed the claims. The central issue in the appellate ruling, later upheld by the STJ, was the interpretation of the licensing agreement. The court found that the plaintiff held only a license to use the prints, without any assignment of intellectual property rights, which remained with the licensor. The court also emphasized clause 7.3, which provides that the use, reference to, or mention of the other party’s name or trademark for purposes beyond those set forth in the agreement requires prior and formal consent. In light of this contractual framework, and given that the plaintiff neither demonstrated such consent nor included the rights holder as a co-plaintiff or presented proper authorization, the court found a lack of standing with respect to the damages claims based on alleged unfair competition related to the licensed prints.

The appellate Decision also denied copyright protection for the designs of two dresses and one skirt on two independent grounds. The first concerns ownership: pursuant to Article 11 of Law No. 9,610/1998 (the Brazilian Copyright Act – LDA), the author is the natural person who created the work. Accordingly, original ownership of the work, as a rule, vests in the individual author, and ownership by a legal entity—except in exceptional cases expressly provided for in the LDA—depends on an assignment of rights from the creator, which was not evidenced in the case record. The second relates to the lack of sufficient originality in the garments, which were deemed commonplace in the market.

Before the STJ, the plaintiff argued, among other points, that a licensee has standing to judicially enforce rights arising from the licensing agreement, irrespective of the licensor’s participation. In support of this argument, it contended that the dispute concerned only the exclusive use rights granted under the agreement, which would entitle it to protect the rights obtained through licensing. The appeal, however, was dismissed. The Court emphasized that the lower court had expressly found that the agreement did not grant the licensee authority to act independently, requiring the consent or participation of the rights holder, which was not present in this case. It further noted that revisiting this conclusion would require reinterpretation of contractual provisions and reexamination of the evidentiary record, which is barred under STJ Precedents No. 5 and 7.

Finally, the decision consolidates the understanding that a licensee’s standing to litigate depends on the limits established in the contract, making the express authorization of the rights holder or its participation in the proceedings indispensable. It also reinforces that, in the fashion industry, copyright protection requires a concrete showing of originality, and cannot be based solely on the inclusion of a work within an exclusive collection.Parte superior do formulário

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The TJRJ and STJ decisions can be accessed at: Appeal No. 0395438-84.2014.8.19.0001 and AREsp No. 1,935,576.

Note: For quick release, this English version is provided by automated translation without human review.