The use of brand names of a previous group without authorization constitutes trademark infringement and represents parasitic exploitation and an unfair competition practice, giving rise to compensation for the trademark owner. However, this type of use occurs frequently among musicians who have enjoyed some notoriety in the past as members of famous bands and are now trying to build on it in a solo career or with a new band.
Recently in Brazil, we have had legal disputes related to this subject, and some large local groups and their past and present members are all involved. Among them, the groups Cidade Negra, RPM and Legião Urbana. The 3 groups were very famous and marked the history of the Brazilian music scene in the past.
The Cidade Negra affair is still far from over. Regarding the case of RPM, the Court of Justice of São Paulo concluded that the singer was prohibited from using the brand name “RPM” because it had already been agreed between the former members, only to use the group’s brand name collectively and not individually, as he had done.
But one of the most emblematic cases is the dispute between the company Legião Urbana Produções Artísticas Ltda. (belonging to the son of band leader Renato Russo, who died many years ago), and owner of several trademark registrations for the band name LEGIÃO URBANA, and its former members.
The lawsuit was filed by these former members of the group against the company Legião Urbana Produções Artísticas Ltda. The plaintiffs’ allegations are that Russo, while alive, made it clear that the group belonged to its three members: Villa-Lobos, Marcelo Bonfá and Russo. They maintain that they are not infringing the trademark rights of Legiao Urbana as they will still be members of Legiao Urbana.
Plaintiffs also allege that they cannot be prevented from using the group name Legião Urbana, even though they are not the true owners of the mark according to trademark registrations granted by the Brazilian Patent and Trademark Office. brands. Therefore, it is unacceptable that existing recordings are used in such an abusive manner, excluding claimants from using their own work or even their artistic identity. A trademark that reproduces an artistic work cannot be used to exclude the author of such a work of his own creation. Therefore, the protection of the authors of the creations of the musical group Legião Urbana must prevail instead of the trademark rights of the company (defendant) in question.
The defendant, which included Russo as a senior partner as well as former class members (including both plaintiffs), filed the first trademark applications for LEGIAO URBANA on September 16, 1987.
The defendant presented his defense arguments alleging that after the first filings of trademark applications for LEGIÃO URBANA, the three partners who were minors at the time, including the plaintiffs, decided to leave the company, assigning their shares to Russo , the remaining partner.
The plaintiffs were properly indemnified at that time, giving full and irrevocable release for any further claims in court or elsewhere. Therefore, given that the plaintiffs left the company of their own free will and gave full freedom for any other legal action or elsewhere, without any other reservation for themselves as to any commercial use of the mark concerned, the possible rights of any claimant to continue to use the LEGIÃO URBANA mark is something that only the courts could take a definitive position.
The lower court ruling established that a band can be run like a corporation, with the aim of generating profits, and it is even possible to formally incorporate as such (with corporate registration, among other things) . But when it comes to registering the name of the group as a trademark, it must be taken into account that behind this lies a cultural and authorial work carried out by the musicians who are part of it. And it was on the basis of this understanding that the judge in the Legião Urbana case allowed the plaintiffs to use the group’s name in their musical presentations, although he did not attribute any co-ownership of the mark, the judge concluded that the plaintiffs’ participation in the creation of the name of the group “Legião Urbana” and in the projection of this mark through the group must prevail over the rules of ownership and use of the mark.
The lower court’s decision was upheld by Brazil’s Superior Court of Justice. The Superior Court concluded that the use of the band name by the former members was part of the expression of their own identity, constituting the reflection of their personality, which could not be restricted by the Industrial Property Act.
Thus, based on the social function of the property, the negative repercussion of the right of access to culture and the exercise of copyright, the plaintiffs can use the name of the group “Legião Urbana” in concerts, even without being the owners or licensees. the filing of the LEGIÃO URBANA trademark.
The decision, although it seems reasonable, mainly from the point of view of the artists and what the name “Legião Urbana” means for the public, from a legal point of view, is very controversial. Indeed, by allowing plaintiffs to use the band name without ownership or permission, defendant has trademark rights to that band name.
The reality is that the Brazilian judiciary, albeit technically contrarian, has attempted to balance this group name issue. However, it is important to mention that the applicants cannot make any use of the mark for other commercial purposes, such as, for example, the granting of licenses for different products.