by Amanda Martins Navegantes
April 24, 2017
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At the end of 2016, the Third Panel of the Superior Court of Justice issued an extremely relevant decision in a copyright case dealing with the reproduction of an architectural work in a commercial context.
The case relates to the use of the image of a house located in a private condo in the label and some commercial ads of a well-known Brazilian household paint.
For using the image of the house, the paint manufacturer obtained authorization from the owner of the house and also from the photographer who took the picture. Nevertheless, no license from the architect who created the project of the house has been secured.
As a result, the architect brought a copyright infringement lawsuit against the paint manufacturer and the respective retailer. In the lawsuit, the architect claimed that his copyrightable work has been unduly reproduced and sought material and moral damages as a compensation for the alleged infringement. He also sought injunctive relief to compel the Defendants to indicate his name in the label along with the house image.
In response, the Defendants claimed that they secured a license from the owner of the house whose image was reproduced, as well as from the photographer who captured the image. Moreover, they emphasized that the image of the house facade was captured in a public place and relied on the exception foreseen in section 48 of the Brazilian Copyright statute.
Examining the first argument, the Superior Court of Justice confirmed that architectural works are copyright protected in Brazil, pursuant to item X of section 7 of the Copyright statute. According to the court, this protection encompasses not only the architectural project per se, but also the materialization of the project in the house. In the court’s view, therefore, the house facade constitutes an original work duly protected by copyright.
With regard to the authorization of the property owner, the court correctly held that, according to section 37 of the Brazilian Copyright statute, the acquisition of an original work does not grant to the buyer any copyright over the work.
On the other hand, the court acknowledged that the commissioner of an architectural project can materialize the work and fix it in a tangible medium (that is, building the house) regardless of the architect’s express authorization. After all, in the court’s view, this use is inherent to the purpose for which the project was acquired.
On this point, the court explained that "if the use of the work is inherent to the purpose of the acquisition, the buyer can use it without requiring any authorization from the author of the project.”
Applying this test, the court concluded that the reproduction of the house image in labels and commercial ads is not inherent to the purpose for which the architectural project of the house was acquired.
Further, as under Brazilian law the copyright in the project is not automatically assigned to the property owner, the court held that the license acquired from the house owner is immaterial for copyright purposes. According to the court, the only legitimate person who could validly grant the license is the creator of the project who retained the copyright over the work.
With regard to the second argument – reproduction of works located in public places – the court conceded that the exception provided in section 48 of the Copyright Act can be applied to architectural works located in private properties, as long as the work can be seen from a public place (which was the case).
However, the court held that the rule of section 48 is an exception, which, as such, must be narrowly construed. Otherwise, the copyrights of the author in the work would be practically eliminated.
Thus, the court held that the legal exception could not be applied to the instant case, since the image of the house was not part of a landscape. It was actually the only thing reproduced in the picture.
For this reason, the court consolidated the understanding that works located in public places – or located in private areas that can be seen from public places – can be reproduced only when it is one additional component of a landscape, not when it is portrayed as the main or as the most prominent element of the picture.
In light of this, the court found for copyright infringement and decided the lawsuit in the Plaintiff’s favor. The court granted material and moral damages as a result of the infringement, and also condemned the Defendants to indicate the architect’s name along with the house image.
The ruling, rendered by the highest Brazilian court for infra-constitutional matters, establishes a correct differentiation between the acquisition of the copyrights in the work and the acquisition of the physical medium in which the copyrighted work is fixed.
It also teaches that the use of a commissioned work can only occur within the intrinsic context for which the acquisition was negotiated. In the absence of a copyright assignment document, thus, the property owner who commissioned the architectural project can obviously build the house, but cannot authorize the reproduction of the house image for commercial purposes.
The ruling also provides important guidance on how section 48 of the Copyright Act should be construed, making clear that the exception does not apply when the copyrighted work is the main element portrayed in the picture.
This precedent, therefore, should be carefully observed not only by architects and companies of the real estate market, but also by anyone who intends to reproduce the image of architectural works for commercial purposes.
1 Art. 48. Works permanently located in public places may be freely represented by painting, drawing, photography and audiovisual processes.
2 Art. 37. Acquisition of the original or a copy of a work shall not confer any of the authors economic rights on the acquirer, unless otherwise agreed between the parties and subject the cases provided for in this Law.
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