Last month, the São Paulo Court of Justice ruled in favor of former Charlie Brown Jr. band members Thiago Castanho and Marco Britto, allowing them to continue using the band's name in their performances.
The dispute began when André Lima Abrão, the only son of the band’s former vocalist, known as Chorão, took legal action to prevent guitarists Mr. Castanho and Mr. Britto from using the Charlie Brown Jr. trademark. According to the author of the suit, the expression was registered as a trademark owned by him before the BRPTO and he had signed a Trademark Ownership Agreement with the musicians, requiring them to seek his permission to use the band’s name.
In their defense, the musicians argued that “Charlie Brown Jr.” is inherently associated with the band they were part of. They noted that the BRPTO had previously denied Chorão’s attempt to register the name, citing Article 124, Item XVII, of Law #9,279/96 due to the potential for confusion with the iconic "Charlie Brown" character and "Snoopy," owned by Peanuts Worldwide LLC.
However, in 2022, Mr. Abrão successfully registered “Charlie Brown Jr.” as a mixed trademark before the BRPTO in classes 31 and 45. According to BRPTO’s database, Peanuts Worldwide LLC has since initiated Administrative Nullity Proceedings, seeking to cancel Abrão’s registrations; the proceedings are still pending review by the Agency.
Regarding the private contract signed with Mr. Abrão, the musicians argued in court that the contract’s original purpose was undermined. They claimed the terms had become excessively burdensome, suppressing their right to identify themselves as former members of the acclaimed band. Additionally, they stated they had used the band’s name according to the contract’s provisions.
In the ruling, the judge noted that the musicians’ reference to the band was grounded in their personality rights and the exercise of their professional activities It was also highlighted that the musicians had “demonstrated diligence toward their contracts, explicitly requesting ‘attention’ to display their own names” alongside the phrase “Charlie Brown Jr.” This complied with the contract’s stipulation regarding the layout and proportion of the names’ visual presentation.
It is worth noting that this is not the first high-profile dispute over a renowned Brazilian band’s name. The ruling referenced the recent case involving the band Legião Urbana as a legal precedent.
In 2021, similar to the Charlie Brown Jr. case, Brazil’s Superior Court of Justice ruled that former Legião Urbana members’ use of the band’s name was essential to their artistic freedom and copyright over their work. The court determined that performing under the name Legião Urbana, which is registered before the BRPTO, in reference to the original band, was legitimate even without the trademark owner’s authorization.
As a result, while former members did not own or license the BRPTO trademark registration, they were permitted to use the name Legião Urbana in performances. However, using the name for commercial purposes outside of performances, such as product sales, remains prohibited.
In contrast, a recent dispute involving another iconic Brazilian rock band had a different outcome. In May of this year, courts ruled that one of RPM’s original members must refrain from using the band’s name solely to promote his cover band. Judge Luciana Novakoski Ferreira Alves de Oliveira based her decision on the fact that the trademark was co-owned by other members, and using the name without their consent, particularly within the context of a cover band, would conflict with the intent to protect the trademark.
An important aspect of the RPM case is that the original band members had signed an agreement outlining the conditions for using the trademark. The ruling therefore aimed to honor these agreed terms and ensure the legal security of the document.
In reviewing these significant judgments, it is clear that the courts aim to balance the personality rights of band members with the goal of protecting the trademark and its reputation. However, this approach does not invalidate voluntary agreements made between parties under a contract.
The analysis of recent cases underscores the importance of establishing clear and precise terms for a band’s intangible assets, including specific provisions for non-compliance. It also highlights the need to formalize trademark ownership or usage rights in the event of an owner’s death, given that trademark registrations are considered as transferable assets under inheritance law.
While the ruling in the Charlie Brown Jr. case is still subject to appeal, it showcases the courts’ commitment to preserving the integrity of trademarks and respecting the intent of signatories in private agreements, while preventing abuse by any party involved.
