Copyright applied to device mark
- Who is the owner of the copyrights generated by the creation of a device mark (word and device trademark) to a company?
- The use of the device mark by the owner of the trademark, protected by copyrights, generates obligation to pay damages (material damages) and indemnity for moral damages?
- What is the statute of limitations for claims for damages, for copyright infringement created in November of 1993, during the effects of the former Brazilian Civil Code (Civil Code of 1916) and during the term of the former Brazilian Copyright Law (nº 5988/73)?
These are some of the questions that the Fourth Panel of the Brazilian Superior Court of Justice (STJ) has started to deliberate and decide on the judgment of the Special Appeal No. 1.228.081/MT, in the virtual judgment session of May 19, 2020, which is available on the website: https://www.youtube.com/watch?v=CZXRJ_3m7Y4.
The case involves a request for damages filed by the author that create the device mark (word and design trademark G GAZETA), in November 1993, for the company Grupo de Comunicação GAZETA, from the state of Mato Grosso, with the factual peculiarity that the author, at that time, was the Defendant’s employee, exercising the function of designer, and was fired in 2002. The lawsuit asking for damages was filed almost 10 (ten) years after the creation of the device mark.
The Court of Appeals of the State of Mato Grosso held to accept the complaint and refuse the application of statute of limitations, based on the transition rules about the countdown of deadlines provided by Article 2028 of the Brazilian Civil Code from 2002, and ordered the company to pay the plaintiff damages in the amount of R$ 60,000.00 for material damages and R$ 20,000.00 for moral damages, with monetary correction by IGPM starting the date of the decision (March 10, 2010). Therefore, the total amount of the damages fixed by the State Court, applying the correction by the IGPM, would currently result in the approximate amount of R$ 152,000.00.
The defendant has filed a Special Appeal on the grounds on the statute of limitations, pursuant to Article 131 of the former Copyright Law (nº 5998/73 – revoked), which provided for a limitation period of 05 (five) years for damages arising from the violation of copyright. The argument was that the statute of limitations had elapsed before the new Copyright Law (nº 9610/98) be enacted and before the enactment of the new Brazilian Civil Code of 2002. As a subsidiary argument, the defendant has requested that, if the claim for application of the statute of limitations is not accepted, the damages amount would be deemed excessive and should be reduced.
The Rapporteur, Honor Judge Marcos Buzzi, issued a decision dismissing the claim for application of the statute of limitations, considering applicable the limitation period of 10 (ten) years provided by the transition rules of the Brazilian Civil Code of 2002, and also, considering that the Brazilian Copyright Law in effect has no provision on the statute of limitations. Furthermore, the Honor Judge has understood that there would be a situation of co-ownership of the work. However, the Honor Judge has voted to partially grant the Special Appeal only to reduce the amount of the damages, fixing the amount of R$ 20,000.00 for material damages and R$ 20,000.00 for moral damages.
After the decision of the Rapporteur, the Panel has started the discussion of the case and the Honor Judge Antonio Carlos Ferreira has stated that he had difficulties in finding grounds for sustain the decision regarding the moral damages, as in his view the illegal act would be breach of contractual obligation, which is why the damage would be exclusively material.
On the other hand, Honor Judge Maria Isabel Galloti has presented questions and doubts about the suitability of material damages in the specific case, as it is about creating a device mark, which only lends itself and is useful to the company that hired the service for the mentioned creation.
The Honor Judge Isabel Galloti has affirmed that she could even understand the conviction for moral damages, resulting from the modification of the device mark carried out later by the trademark owner, without the author’s consent, but she could not see a link between the creation of the device mark and eventual payment of damages for the use of the logo for several years, it seems that, in these cases, the remuneration will be fixed contractually according to the market values for the work of creating device marks.
It was then established, with interventions by Honor Judge Luiz Felipe Salomão, an interesting debate on the legal nature of the creation object of the lawsuit, either as a trademark (industrial property) or as a copyright, debating the different possible just forms of remuneration for the creator of a commercial device mark, as well as the Honor Judge Luiz Felipe Salomão, who introduced questions and debate about the statute of limitation.
The judgment was suspended due to the request of Honor Judge Luiz Felipe Salomão, who has stated that he would like to analyze more carefully the issue of the statute of limitations, in the specific case, and the votes of the other Honor Judges will be issued after the decision from Honor Judge Luiz Felipe Salomão.
