Brazilian Court Sets Standards for Protection of Titles of Copyrighted Works

The Brazilian copyright statute protects original works of authorship and expressly provides that the protection encompasses the title of the copyrighted work. According to the statute, for a title to be protected, it has to be: (i) original; and (ii) not likely to be confused with the title of another work of the same genre, previously published by another author.

Although this provision is interesting, so far it had not been the object of close scrutiny by Brazilian courts. Fortunately, this scenario seems to be changing. In a landmark decision published on February 2012(1), the 26th Civil Court of Rio de Janeiro examined the enforcement of this section of the law, as well as set important standards for the protection of titles of copyrighted works.

The dispute involved two publishers which released two different books under the same title. The first book, named ”CAMPO DE ESTRELAS” (”Field of Stars”), was published by the Plaintiff in 2006 and deals with the well-known ”Routes of Santiago de Compostela” in Spain. The second book, also named ”CAMPO DE ESTRELAS”, was published by the Defendant in 2007 and explores the same theme.

As both books have the same title and target the same audience, Plaintiff brought an infringement lawsuit based on that provision of the copyright statute, seeking an injunctive relief to compel the Defendant to cease the use of the title plus damages. 

In its response, Defendant denied any infringement asserting that the title “CAMPO DE ESTRELAS” is not original because it comes from the Latin expression “Campus Stellae”, or simply “Compostela”, precisely the name of the destination to which both works are dedicated. Defendant was also able to prove that other books about the “Routes of Santiago de Compostela” embody identical or similar terms in their titles.

The judge started the analysis with the originality requirement making direct reference to the roots of the term “CAMPO DE ESTRELAS”. The magistrate conceded that the expression comes from the Latin “Campus Stellae” and that this resulted in “Compostela”, formative element of the name “Santiago de Compostela”.

According to the judge, this is a prima facie evidence that expression “CAMPO DE ESTRELAS” is intrinsically associated to the “Routes of Santiago de Compostela” and is a common term when used in connection with the subject matter of both works. For sustaining this view, the judge listed four other books published by different authors whose titles embody the challenged term, namely:

– “Caminho de Santiago, Uma Peregrinação ao Campo das Estrelas”, 1998;
– “Campo das Estrelas”, 2001;
– “Foice na Lua do Campo das Estrelas”, 2004;
– “Pés no Caminho, Campo de Estrelas”.
 
The judge pointed out that the existence of these titles is an evidence that “CAMPOS DAS ESTRELAS” in itself is not an original expression that qualifies for protection.

In respect to the second legal requirement for protectability – no confusion with the title of a previous work of the same genre –, the court first held that the Plaintiff’s title was not sufficiently distinct as opposed to the other book titles.

Construing the term “genre”, the court stated that the crucial question is not whether the works pertain to different book categories (novel, fiction, etc.), but instead whether they belong to the same artistic field (literary works, motion picture, music, etc.). As a result, the court concluded that all books belong to the same genre (literary works) and that the Plaintiffs title equally does not comply with the second requirement of the law.

For these reasons, the court held that the Plaintiff was not entitled to claim exclusive rights over the title “CAMPO DAS ESTRELAS” and dismissed the lawsuit rejecting the Plaintiff’s counts.

Although this ruling is subject to an appeal, it provides useful guidance on how to determine as to whether a certain title is original and subject to protection under this provision of the copyright statute. It also shows that, prior to asserting exclusive rights in a title, the copyright owner must examine the meaning of the expression and particularly check if the term has already been used by other authors.    

Finally, the ruling is an indication of how the term “genre” tends to be construed, making clear that it refers to the artistic field in which the work is inserted, and not to possible categories or content-type classifications created by the market. Thus, in principle, the title of a book can be identical to the title of a song and still be subject to protection under this specific provision of the copyright law.

It remains to be seen how courts will deal with the issue when is not so easy to determine the “genre” of the work or when the second comer is likely to be perceived by the public as a derivative work.            

Another intricate issue is whether the same outcome would be achieved if the dispute were examined under principles of trademark law. After all, for a mark to be protectable, it does not need to be original but only needs to be distinctive and able to function as an indicator of source.     
 

In spite of this, this precedent is likely to set the foundations of the case law on this interesting section of the Brazilian copyright statute, which makes the ruling significant  not only for publishers but for the whole entertainment industry.   
   

(1)Catedral v. Globo, Lawsuit n° 2008.001020386-7, 2012.