At the outset, it should be clarified that piracy can be combated in Brazil through civil and criminal lawsuits, as well as through administrative procedures, such as police investigations.
Criminal court measures applicable to the infringement of trademark registrations, industrial designs, patents and/or unfair competition are initiated through Private Criminal Action, that is, it depends on the initiative of the owners of the infringed registrations. At the same time, by choice of lawmakers, copyright violations are prosecuted through Criminal Proceedings in the Public Interest, such that it depends on the initiative of the Public Prosecutor’s Office.
Specifically regarding criminal liability in Brazil, it is important to highlight that such liability is governed by the so-called “principle of legality”. Thus, according to Art. 1 of the Penal Code, “there is no crime without a previous law that defines it (…)”,meaning no-one will be punished if there is not previously a law defining the specific situation as a crime.
That principle is closely linked to the doctrine that criminal behavior must be described exhaustively. In view of this, according to Brazilian Criminal Law, an act will only be considered a crime if defined specifically and detailed by law.
When the aforementioned rules are applied to Intellectual Property issues, the result is that only specific acts described as crimes by the Criminal Code (in the case of copyright) and the Brazilian Trademark and Patent Law (in the case of registered trademarks, patents and unfair competition) should be punished.
The Brazilian legislation on intellectual property rights is as follows: Industrial Property Law No. 9,279/1996 (covers patents, industrial designs, trademarks and unfair competition); Copyright Law No. 9,610/1998; Software Law Nº. 9,609/1998; Penal Code (provides for some aspects of copyright); Code of Criminal Procedure; and Code of Civil Procedure (the latter two applicable to all Intellectual Property rights).
In addition to this legislation, the Customs Regulation (Decree 6759/2009), under the Federal Revenue of Brazil, regulates the administration of customs activities, and the supervision, control and taxation of foreign trade operations. This regulation provides for the retention, ex officio or at the request of holders of intellectual property, by the customs authority, during the customs conference, products marked with counterfeit, altered or imitated brands, or that present false indication of origin.
In addition to this legislation, the Customs Regulation (Decree 6759/2009), under the Federal Revenue of Brazil, regulates the administration of customs activity and the supervision, control and taxation of foreign trade operations. Such regulation provides for the retention, ex-officio or at the request of holders of intellectual property, by the customs authority, during the customs inspection, of products marked with counterfeit, altered or imitated trademarks or that present false indication of origin.
The same Customs Regulation establishes that the customs authority must apply the penalty of loss of goods that present an essential characteristic that is falsified or adulterated.
The provisions of Decree 6,759/2009 and the Industrial Property Law (9,279/1996) must be observed given the express provision of Section 4, articles 51 and 52 of the TRIPS Agreement, approved by Legislative Decree 30/1994 and promulgated by Decree 1,355/1994, which allow individuals to apply for the suspension of importation of goods that violate their intellectual property rights.
In this sense, RFB Normative Instruction No. 1,986/2020 establishes special procedures for control, in the import or export of goods and merchandise, in case of suspected irregularity punishable with the penalty of confiscation.
Thus, the national legal framework sets mechanisms for intellectual property holders to protect their assets, providing means to combat irregularities and piracy in foreign trade operations.
Accordingly, each kind of intellectual property is individually regulated by the laws specified above as follows:
Under Articles 183 to 186 of the Industrial Property Law, an infringement of a patent is committed by whoever: manufactures a product that is the object of a patent of invention or utility model, without authorization from the owner; uses a means or process that is the object of a patent of invention, without authorization from the owner; exports, sells, exhibits or offers for sale, holds in stock, conceals or receives, for use for economic purposes, a product manufactured with infringement of patent of invention or utility model, or obtained by a patented means or process; imports a product that is the object of a patent of invention or a utility model or obtained by a means or process that is patented in the country, for the purposes previously provided for, and that has not been placed on the foreign market directly by the patentee or with his consent; provides a component of a patented product, or material or equipment to carry out a patented process, provided that the final application of the component, material or equipment necessarily induces the exploitation of the patent object. Such crimes are also characterized even if the infringement does not impact all the patent claims or is restricted to the use of means equivalent to the object of the patent.
Under Articles 187 and 188 of the Industrial Property Law, an infringement of an industrial design is committed by whoever: manufactures, without authorization of the owner, a product that incorporates a registered industrial design, or a substantial imitation thereof that is likely to mislead or cause confusion; exports, sells, exhibits or offers for sale, holds in stock, conceals or receives for use for commercial purposes, an object that unlawfully incorporates a registered industrial design, or substantial imitation that may lead to error or cause confusion; imports a product that incorporates an industrial design registered in the country, or substantial imitation thereof that may lead to error or cause confusion, for the purposes previously foreseen, and that has not been placed on the foreign market directly by the owner or with his consent.
Under Articles 189 and 190, both of the Industrial Property Law, a trademark infringement is committed by whoever: reproduces, in whole or in part, a registered trademark, without the authorization of the owner, or imitates it in a manner that may cause confusion; alters the registered trademark of another person already affixed to a product on the market; imports, exports, sells, offers or exhibits for sale, conceals or keeps in stock a product bearing a trademark of another party which is unlawfully reproduced or imitated, in whole or in part; or a product of his or her industry of commerce, held in a vessel, container or packaging bearing the legitimate mark of another person.
In turn, unfair competition is classified as a crime by Article 195 of the Industrial Property Law, the respective criminal acts of which are committed by whoever: publishes, by any means, a false statement, to the detriment of a competitor, in order to obtain advantage; provides or discloses false information detrimental to a competitor with the aim of obtaining an advantage; uses fraudulent means to divert the customers of another party for his or her own profit or that of another party; uses the advertising expression or sign of another party, or imitates it in a manner liable to cause confusion between the products or establishments; makes undue use of another party’s commercial name, establishment name or insignia or sells, exhibits, offers for sale or has in stock a product bearing those references; substitutes on the product of another party the name or company name of such party, without his or her consent, with his or her own name or company name; claims, by way of advertising, to have received a prize or distinction that he or she has not actually been awarded; sells, exhibits or offers for sale, in a container or packaging of another, an adulterated or counterfeit product, or uses such container or packaging to trade with a product of the same type, even if not adulterated or falsified, if such does not constitute a more serious offense; gives or promises money or other consideration to an employee of a competitor in return for which the employee, failing in his or her duties of employment, provides him or her with an advantage; receives money or other consideration, or accepts a promise of payment or reward in return for providing an advantage to a competitor, thereby failing in his or her duties of employment; publishes, exploits or uses, without authorization, confidential knowledge, information or data which may be used in industry, commerce or service provision, except where such confidential knowledge, information or data are in the public domain or are obvious to a person skilled in the art, to which he or she has had access due to a contractual or employment relationship, even after termination of the contract; publishes, exploits or uses, without authorization, such knowledge or information referred to in the previous item, obtained by illicit means or to which he or she has had access by fraud; sells, exhibits or offers for sale a product that he or she wrongly states to be subject of a patent filed or granted, or of a registered industrial design or who wrongly states in a commercial announcement or paper that such product has been filed, patented, or registered; publishes, exploits or uses without authorization, the results of tests or other undisclosed data that have been developed involving a considerable effort and which has been submitted to government entities as a condition for the approval of the marketing of products.
Unlike other intellectual property rights, with regard to copyright, Law No. 9,610/98 expressly states that the respective protection occurs independently of any previous record, the corresponding owner having the right to protection against pecuniary and non-pecuniary damages related to the work created.
Moreover, according to Art. 184 of the Penal Code, a crime is committed by whoever infringes copyright and related rights, even more so if: the infringement consists of total or partial reproduction, with the purpose of direct or indirect profit, by any means or process, of intellectual work, interpretation, execution or phonogram, without express authorization of the author, the interpreting artist or performer, the producer, as the case may be, or whoever represents them; whoever, for the purpose of direct or indirect profit, distributes, sells, exhibits for sale, rents, introduces into the country, acquires, conceals, has in storage, an original or copy of intellectual work or phonogram reproduced in violation of copyright, of the right of an interpreting artist to performer or of the right of the producer of the phonogram, or else rents an original or copy of intellectual work or phonogram, without the express authorization of the right holders or whoever represent them; the infringement consists of offering to the public, by cable, optical fiber, satellite, waves or any other system that enables the user to perform the selection of the work or production to receive it at a time and place previously determined by the person who makes the demand, with the intention of profit, direct or indirect, without express authorization, as the case may be, from the author, the interpreting artist or performer, from the phonogram producer, or whoever represents them.
It is also certain that the act will not be classified as a crime when it is an exception or limitation to copyright or connected rights, according to exceptions specified in Law No. 9,610/1998, nor the copying of intellectual work or phonogram, in a single copy, for private use of the copyist, without intention of direct or indirect profit.
The intellectual property protection of computer programs was, for the first time, regulated in Brazil by Law no. 7,232/1984. Such law provided, in its article 1, the complete protection to the owners of the rights of computer programs of foreign or national origin, defining in its sole paragraph the concept of a computer program as being: the expression of an organized set of instructions in natural or coded language, contained in physical support of any nature, of necessary use in automatic information treatment machines, devices, instruments or peripheral equipment, based on digital technique, to make them work in a determined way and for determined purposes.
The advent of Law No. 9609/98 (“Software Law”), still in effect, established new regulations for the protection of the intellectual property of computer programs, replicating the concept of computer programs of the previous law and extending the protection to techniques analogous to digital ones.
Observing the specifications provided by the current Software Law, the intellectual property protection legal regime for computer programs is conferred to literary works by the copyright and related rights legislation in force in Brazil.
Law No. 9609/98 classifies software copyright violation as a crime (Art. 12 and §§), protecting the intellectual rights of software developers and software creation companies, providing the infringer with a penalty of six months to two years of detention or payment of a fine.
In case the violation consists of the reproduction, total or partial, by any means of the computer program for commercial purposes, the offender is subject to imprisonment from one to four years and a fine.
The same penalty is incurred by whoever sells, exposes for sale, introduces into the country, acquires, hides, or keeps in deposit, for commercial purposes, the original or copy of the computer program with copyright violation.
Still, as to the specificities related to such violations, it is foreseen that the preliminary search and seizure measures will be preceded by inspection, and the judge may order the seizure of the copies produced or commercialized with copyright infringement, its versions and derivations, in possession of the infringer or of whoever is exposing, keeping in deposit, reproducing or commercializing them.
Regardless of the criminal action, the injured party is entitled to file a judicial action to prohibit the violator from practicing the violation, with a fine in the case of non-compliance and compensation of losses and damages for the losses resulting from the offense.
As a rule, in the criminal sphere, it is not possible to apply an objective liability for intellectual property infringement (differently from what the Brazilian Civil Code states), especially considering that only intentional (willful) acts are defined as crimes against Intellectual Property. In turn, Art. 18 of the Brazilian Penal Code establishes the rule that a crime is deemed to be intentional when “the agent wanted the result or took the risk of producing it”.
Therefore, the intent is the main element that allows the Code of Criminal Procedure to prosecute and punish offenders. For this reason, no-one shall be punished in the event of committing an intellectual property crime without intent.
Also with regard to criminal liability for intellectual property infringement, it is possible that a natural person (e.g. an officer or employee) will be personally prosecuted and held liable for an infringement committed by a legal entity, different to that which occurs in civil liability.
As explained earlier, the infringement of trademarks, industrial designs and patents are criminally prosecuted through a Private Criminal Action, a process instituted after a request for police to investigate (Notitia Criminis) before the local Police Station.
Furthermore, the investigation of crimes against intellectual property and the gathering of evidence of authorship and materiality are essential steps to enable the subsequent exercise of the right of complaint by the victim before the criminal court.
In contrast, copyright infringements are prosecuted criminally through Criminal Proceedings in the Public Interest Action, the process of which begins after the filing of a request for a Preparatory Measure before the local Court, being directly promoted by the Public Prosecutor’s Office.
Below are two flowcharts that illustrate both procedures:
In the criminal sphere, the process and the judgment of crimes against immaterial property, which are classified as crimes that leave trace evidence, have special procedural rules to the matter and, besides requiring proof of the right of action by the offended party, it also involves the performance of a technical expert examination (corpus delicti examination) and the homologation of the expert report prepared by the competent judge.
Thus, the report proving the infraction is a procedural condition for criminal action involving such crimes. After the judge endorses the report, the Code of Criminal Procedure provides a thirty (30) day deadline from the date of acknowledgement of the endorsement for the victim (individual or legal entity represented by its managers) to exercise their right and file a criminal complaint against the offender, in the case of crimes that leave traces.
Alternatively, for crimes that proceed at the victim’s initiative, the law provides a time limit of six (6) months, counting from the day the victim learns of the crime. This deadline is provided for in the general rule for private criminal actions related to conduct that does not depend on materiality and, in theory, would not be confused with the 30-day specific deadline.
However, despite the specific regulation on the subject, the above deadlines may be applied concurrently, depending on the Court’s interpretation, requiring the victim to take the initiative and obtain evidence.
Moreover, it should be noted that crimes against trademark registration and unfair competition are classified as minor offensive crimes, i.e., crimes whose maximum penalties provided by law do not exceed two (2) years.
Therefore, as provided in Law No. 9099/95 (Law of Special Courts), the Special Criminal Courts are responsible for observing the expeditious procedure and the decriminalization institutes provided by law, promoting conciliation, trial and execution of minor offences.
When analyzing the case, the Judicial Authority may apply institutes related to consensual justice between the parties, such as the penal transaction (art. 76 of Law 9.099/95), the conditional suspension of the process (art. 89 of Law 9.099/95) or even agreements of no criminal prosecution (art. 28-A of the Code of Criminal Procedure).
If the sum of the penalties imposed for the crimes exceeds two years, the competence to prosecute and judge the case will be of the Common Justice System, where the process will have more stages.
Finally, it is worth mentioning that as dictated by Art. 387, IV of the Code of Criminal Procedure, when the judge convicts the offender, he must also stipulate in the sentence a minimum amount of compensation for civil damages. However, it will be up to the interested party to take legal proceedings to claim any financial compensation in an amount greater than that previously established in the criminal court, through the production of appropriate evidence.
Authors: Nathália Gonzalez Conde and José Henrique Vasi Werner
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