STJ understands that bar named “Do Leme ao Pontal” does not harm the Copyrights of the famous Brazilian singer, Tim Maia

STJ understands that bar named “Do Leme ao Pontal” does not harm the Copyrights of the famous Brazilian singer, Tim Maia

On October 1, in a collegiate decision, the 3rd Panel of the Superior Court of Justice (STJ) dismissed the request of the heirs of Brazilian singer Tim Maia, who died in 1998, in an appeal against a bar in São Paulo named after the famous song “Do Leme ao Pontal”, written by the singer. According to the decision, the trademark protection granted by the INPI to the owners of the bar is not to be confused with, nor does it extend to, the protection given by copyright to the musical work. In addition, the court held that the expression “do Leme ao Pontal” had been used since before the song to refer to the geographical region that includes the coastal strip of the municipality of Rio de Janeiro/

The dispute began when the heirs of Tim claimed that the establishment in question had improperly used the title “Do Leme ao Pontal”, Tim Maia’s famous song, as the bar’s name, as well as using the artist’s image in an unauthorized way in its advertisements. The São Paulo Court of Justice (TJSP) ruled that the name of the bar, as well as its advertisements, merely “referred to and paid homage to Rio de Janeiro culture, rather than to the work of the composer in question”.

According to the Copyright Law (Law No. 9,610/98), although the musical work itself is protected, the title alone does not enjoy such protection, according to Article 8, VI, which excludes “isolated names and titles” from the sphere of copyright. In this sense, the Court understood that the use of the expression “Do Leme ao Pontal” to name a bar did not characterize copyright infringement, since the protection of the intellectual work does not extend to the isolated title, unless it is original and unmistakable from another work of the same genre. In addition, it was pointed out in the decision that the expression had been used for much longer to refer to a coastal area of Rio de Janeiro and was common knowledge.

Furthermore, as the decision emphasized, the trademark protection granted by the INPI to the appellants, under Law No. 9.279/96, is not to be confused with or extended to the protection given by copyright to musical works, under Law No. 9.610/98. According to the vote of the rapporteur of the case, Justice Ricardo Villas Boas Cueva, “the entire narrative brought by the appellants in the initial petition, as well as the cause of action and the request, are based only on Law No. 9,610/98, under the protection, therefore, of copyright, so that it would be legally unfeasible to analyze the issue of the use of the expression ‘do Leme ao Pontal’ from the angle of industrial property.”

Finally, in his vote, the rapporteur rejected the request made by the heir and pointed out that although the trademark protection system established in the legislation guarantees its owner exclusive use throughout the national territory, the mixed trademark he had indicated was in the name of the record company that holds the rights to Tim Maia’s discography, which was not a party to the proceedings. Likewise, the decision pointed out that this trademark was registered only in Nice Class NCL (10) 41 (referring to recording, production, music publishing, etc.). Therefore, the rapporteur understood that “the said trademark has no relation to the case in hand and does not prevent the defendant from using said expression to name his business”.

The STJ decision can be accessed via the link: RECURSO ESPECIAL Nº 2152321 – SP

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