Brazil’s Superior Court rejects conviction for unauthorized use of trademark and recognizes fair use of database relating to beauty contest promoted by soccer federation

Brazil’s Superior Court rejects conviction for unauthorized use of trademark and recognizes fair use of database relating to beauty contest promoted by soccer federation

In a decision published on June 23, the Third Panel of the Superior Court of Justice (STJ) granted, by majority, the special appeal filed by an online content company, overturning its conviction for trademark infringement related to the use of the expression “Gata do Paulistão” (Paulistão Contest Muse) in a poll conducted on the company’s website. The expression refers to a contest organized by a soccer federation. On this point, the STJ held that the use of the expression fell within one of the statutory limitations on trademark rights. Furthermore, although the Court recognized that the contest’s database—owned by the federation—showed originality and creative effort, and was therefore protected under copyright law, concluded that the partial use of this database by the news portal was also covered by copyright limitations, thus constituting legitimate use.

The dispute originated from a lawsuit filed by the soccer federation, which claimed that the news portal had reproduced, disseminated, and transmitted images of contestants from the “Gata do Paulistão 2011” contest—organized by the federation—while associating the participants with the same soccer clubs and conducting a parallel poll without authorization. According to the plaintiff, such conduct constituted unfair competition and infringed its copyright and trademark rights.

At first instance, the claim was dismissed. The trial court found no evidence of harm to the brand associated with the contest or to the plaintiff’s reputation, noting that similar contests are common. The court also found no causal link between the actions of the news portal and any lost profits, as there was no indication that users who accessed the defendant’s web page would otherwise have accessed or voted on the plaintiff’s official page.

The soccer federation appealed, and the São Paulo State Court of Appeals partially reversed the decision. It held that there had been a copyright infringement due to the unauthorized sharing of the contest’s database, and it recognized the occurrence of counterfeiting and unfair competition, including through the use of the “Gata do Paulistão” word trademark.

The news portal then filed a special appeal before the STJ, arguing that the federation’s database lacked the originality required by Article 7, item XIII, of Law No. 9,610/1998 (Brazilian Copyright Law) for copyright protection, and that the use of the expression and images constituted a legitimate exercise of press freedom, as the portal had not conducted a competing contest, but merely a journalistic poll.

In its judgment, the Third Panel of the STJ analyzed whether (i) the selection of contestants and their association with soccer teams logos constituted a database protected under copyright law, and (ii) whether the context in which the database and trademark were used amounted to copyright and trademark infringement.

Regarding copyright protection of the contest’s database, the justices held that, under Article 7, item XIII, of Brazilian Copyright Law, the contest organized by the sport federation displayed originality and creative effort, as it involved the selection of models and an innovative association with soccer teams. Thus, the Court recognized copyright protection over the database, considering it an intellectual creation rather than a mere compilation of information.

However, the STJ concluded that the news portal’s partial use of the database constituted fair use. To reach this conclusion, the STJ applied the “three-step test” established by the Berne Convention, the international treaty governing copyrights, to which Brazil is a party. This test, adopted by Brazilian courts, allows unauthorized use of protected works only when: (i) it occurs in certain special cases; (ii) it does not conflict with the normal exploitation of the work; and (iii) it does not unreasonably prejudice the legitimate interests of the rights holder. In this case, the Court found that these requirements were met, as there was no evidence of commercial intent, harm to the original contest’s commercial exploitation, or significant damage. The STJ held that the limitation on copyright provided in Article 46, item VIII, of the Brazilian Copyright Lawapplied to the case.

Finally, regarding the use of the “Gata do Paulistão” trademark, the STJ emphasized that copyright protection is distinct from trademark protection and that no moral or material damage to the brand was demonstrated by its use in journalistic content. The Court also concluded that there was a limitation on trademark rights, this time under Article 132, item IV, of Law No. 9,279/1996 (Brazilian Industrial Property Law). The Court ruled that the use of a trademark in television programs or news and social media is permissible, provided it does not cause harm to the trademark owner, which was deemed to be the case.

The judgment can be accessed through the following link: SPECIAL APPEAL No. 2143010

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