In less than a month, Brazil’s Superior Court of Justice (STJ) ruled differently on two appeals filed by the estate of Tim Maia, both involving the unauthorized use of excerpts from the artist’s musical works.
On September 10, the Third Panel of the STJ, upholding the decision of the Court of Appeals of the State of Rio de Janeiro, concluded that the unauthorized use of excerpts from Tim Maia’s musical works on T-shirts was improper. The panel condemned the clothing brand “Reserva,” claiming moral and pecuniary damages.[1]
On October 1, however, the same Third Panel ruled differently in another case. It upheld the decision of the Court of Appeals of the State of São Paulo, which allowed the use of the title of one of Tim Maia’s songs as the name of a commercial establishment without prior authorization, deeming that it did not violate copyright law.
In the first case, the estate of Sebastião Rodrigues Maia, popularly known as Tim Maia, filed a lawsuit against the clothing brand “Reserva,” claiming moral and pecuniary damages resulting from the unauthorized use of excerpts from his musical works, such as “Guaraná & suco de caju & goiabada & sobremesa” from the song “Do Leme ao Pontal” and “Você & eu & eu & você” from the song “Você e Eu, Eu e Você.”
The trial court upheld the claim, and the brand was ordered to pay BRL30,000.00 in moral damages and surrender profits derived from the sales. Upon appeal, the Court of Appeals of the State of Rio de Janeiro increased the compensation for moral damages to BRL50,000.00.
In its Special Appeal, the estate argued that compensation for the unauthorized use of excerpts from Tim Maia’s musical works should not be limited to the profit earned, as that would merely reimburse the damages—instead, the estate called for punitive damages to be considered.
Justice Marco Aurélio Bellizze, the reporting judge, stated in his opinion that “the purpose of copyright law is to encourage the production of artistic, scientific, and cultural works while simultaneously fostering creative and original production. By granting authors exclusive rights to their intellectual creations, copyright law establishes a monopoly over their exploitation, requiring prior and express authorization for any use of their works”.[2] For these reasons, the judge upheld the Special Appeal and increased the compensation for pecuniary damages.
In the second case, Tim Maia’s estate filed a lawsuit against Empório Originale Ltda., claiming compensation for intellectual property infringement caused by the name of a bar in Cotia, São Paulo, after “Do Leme ao Pontal.”
The trial court ruled against the estate, and the Court of Appeals of the State of São Paulo upheld this decision, reasoning that the establishment referenced Rio de Janeiro’s cultural identity in general and not specifically Tim Maia’s work. In its Special Appeal, the estate argued that the song “Do Leme ao Pontal” was an exclusive composition of Tim Maia, registered with the National Library, the Brazilian Union of Composers, and the National Institute of Industrial Property (INPI).
Justice Ricardo Villas Bôas Cueva, the reporting judge, argued that “the phrase “Do Leme ao Pontal” refers to the geographic region encompassing Rio de Janeiro’s coastline. He noted that this region was neither discovered nor invented by the song’s author,”[3] concluding that the specific compensation claim was unwarranted. However, the Special Appeal was partially upheld to reduce the attorney’s fees incurred by the estate.
Although the rulings may seem contradictory, each decision hinges on the specific details of the cases, justifying the increase in compensation for pecuniary damages in one case and the denial of compensation in the other.
Brazilian copyright law, governed by Law No. 9,610/98, establishes in Article 7 that intellectual works are creations of the mind, expressed by any means or fixed on any tangible or intangible medium, whether existing or to be invented.[4] Among the examples listed, musical compositions, with or without lyrics, are explicitly included in subsection V.
Justice Bellizze’s decision in the first case is particularly noteworthy for confronting the clothing brand’s arguments in light of Articles 7 and 8[5], particularly subsection VII of Law No. 9,610/98, which excludes industrial or commercial exploitation of ideas from copyright protection.
Copyright protection extends to the work as a product of human creativity. While ideas may be used and creatively imitated — whether implicitly or explicitly referencing the original work — the use of excerpts from Tim Maia’s songs by the clothing brand, merely adding the symbol “&,” clearly exceeded mere reference. The STJ’s Third Panel determined that the brand had deliberately appropriated the work for commercial purposes without authorization.
For this reason, the Third Panel ruled to increase the compensation for pecuniary damages to cover both restitution — requiring the brand to pay the total profit from sales of the T-shirts — and punitive damages — reflecting the fee that would have been charged to authorize the use of the excerpts.
The situation addressed by Justice Cueva, however, was distinct. Article 8(VI) of Law No. 9,610/98 states that isolated names and titles are not subject to copyright protection. Thus, naming the bar in Cotia “Do Leme ao Pontal” did not constitute copyright infringement.
Additionally, the judge clarified the distinction between types of intellectual property. Copyright encompasses authors’ and related rights, while industrial property includes patents, trademarks, industrial designs, and geographic indications.
The estate’s argument that “Do Leme ao Pontal” was a registered trademark could not be sustained. The INPI registration was not in the estate’s name and was limited to categories related to music publishing, entertainment services, and artistic performances—not commercial establishments.
Brazilian legislators have legally separated copyright protection, governed by Law No. 9,610/98, from industrial property protection, established under Law No. 9,279/96. Each law governs its legal frameworks and assets, ensuring that their protections and enforcement mechanisms do not overlap or extend to one another.
Thus, from any perspective, it is impossible to extend protection in the case of the bar in Cotia/SP, whether under copyright law — because it involves a mere title of a musical work, which the legislation does not protect, and it is also a common phrase referring to Rio de Janeiro’s coastline — or under industrial property law regarding the registered trademark.
Protection is not applicable because the trademark is not registered in the estate’s name and is solely registered within the class covering music publishing and entertainment services, including festival management, event promotion and production, artistic performances, recording, production, and music editing.
Therefore, although the decisions may seem contradictory, both Superior Court of Justice rulings are entirely correct. They underscore the importance of observing the legal framework governing copyright law when using artistic works for commercial purposes.
Author: Fernanda Regina Negro de Oliveira Maluf, Legal Coordinator at Ernesto Borges Law Firm, specializing in strategic litigation and consulting. University Professor. Expert in Corporate Law (FGV) and Business Law (Insper).
[1] https://www.stj.jus.br/sites/portalp/Paginas/Comunicacao/Noticias/2024/13092024-Herdeiros-de-Tim-Maia-serao-indenizados-por-uso-indevido-de-musicas-do-artista-em-camisetas.aspx#:~:text=%E2%80%8BA%20Terceira%20Turma%20do,por%20uma%20empresa%20de%20vestu%C3%A1rio.
[2] Special Appeal No. 2.121.497/RJ, reporting judge Justice Marco Aurélio Bellizze, Third Panel, decided on September 10, 2024, published in the Official Gazette (DJe) on September 12, 2024.
[3] Special Appeal No. 2.152.321/SP, reporting judge Justice Ricardo Villas Bôas Cueva, Third Panel, decided on October 1, 2024, published in the Official Gazette (DJe) on October 4, 2024.
[4] Article 7. Protected intellectual works are creations of the mind, expressed through any medium or fixed on any support, tangible or intangible, whether known or invented in the future […].
V – musical compositions, with or without lyrics;
[5] Article 8. The following are not subject to copyright protection under this law: […]
VII – the industrial or commercial exploitation of ideas contained in works.
Autor: Fernanda Regina Negro de Oliveira • email: fernanda.oliveira@ernestoborges.com.br
