Flesch and Bruno Maeda
The Superior Court of the State of Minas Gerais has ruled
that a Brazilian engineering company was not required to indemnify two large
US-based software companies for the use of unlicensed software. The lawsuit was
filed by one of the multinational software companies and by an organisation
(representing the other software manufacturer) against a Brazilian entity as a
result of the seizure of more than one hundred unlicensed software programs
from the latter. The first level court required the Brazilian defendant to
cease using the software programs unless it acquired the corresponding licences
and also condemned the defendant to pay two and a half times the total value of
the software programs seized. This decision was based on the Brazilian Software
Law (Law No. 9,609/1998) which affords intellectual property protection to the
software of foreigners who are domiciled in a country that recognises the same
rights to Brazilian and foreigners domiciled in Brazil. The Superior Court of
the State of Minas Gerais, however, ruled that the plaintiffs have not proved such
reciprocity of protection and therefore decided that they are not entitled to
the protection of their rights in Brazil.
The plaintiffs had presented a statement from the US
Copyright Office alleging that "US copyright law grants the same
protection to Brazilian and US works." But the Brazilian defendant claimed
that the US does not assure the same rights to Brazilian entities since its
copyright law was amended by the WIPO Copyright Treaty, which Brazil is not yet
a contracting party. The Court held that the statement of the US Copyright
Office is not sufficient to attest to the existence of equivalent rights since
it is also necessary to prove the law's application. The plaintiffs presented
evidence to demonstrate that past decisions on the same matter in the US have
ruled in favour of foreign entities. Additionally, the plaintiffs argued that
reciprocity does not have to be proved since Brazil and the US are members of
the Berne Convention and already provide protection to computer software in
their national laws. The plaintiffs have already filed an appeal against the
Superior Court decision. For further information, please contact Esther Flesch
and Bruno Maeda.
Flesch practices general corporate and commercial law. She received her master
of laws degree from the University of Michigan Law School in Ann Arbor, and
obtained her doctorate from the Universidade de Sao Paulo Law School. Ms.
Flesch is registered at the Brazilian Bar Association, Sao Paulo chapter.
Ms. Flesch focuses on legal
issues involving compliance, entertainment, information technology,
intellectual property protection, as well as licensing and technology transfer agreements.
She also advises clients on pharmaceutical and healthcare matters,
telecommunications law and media-related transactions.