Simply saying that “Dado and Bonfá gained the name Legião Urbana” is incorrect. It is also incomplete to state that only the company that owns the trademark can use the expression under any circumstances.
The court separated two issues. The registered trademark continues to be linked to Legião Urbana Produções Artísticas Ltda. Dado Villa-Lobos and Marcelo Bonfá were not recognized as co-owners of the registration. At the same time, a judicial decision preserved by the Superior Court of Justice (STJ) determined that the company cannot prevent the two musicians from using the brand in the exercise of their professional artistic activity.
It is this difference between being the owner of the trademark and having a specific right of use that explains much of the confusion surrounding the case.
Who owns the Legião Urbana brand?
In the process analyzed by the STJ, it was recorded that the application for the trademark “Legião Urbana” was filed with the National Institute of Industrial Property (INPI) in 1987 by Legião Urbana Produções Artísticas Ltda. Registration was subsequently granted in the name of the legal entity. The court made it clear that the decision in favor of Dado and Bonfá did not change this ownership.
This follows the general rule of the Industrial Property Law. Article 129 of Law No. 9,279/1996 establishes that trademark ownership is acquired by validly issued registration. The holder is also guaranteed, among other rights, the rights to transfer the registration, license the use and ensure the integrity and reputation of the brand.
Therefore, when the question is “who is the registered holder of Legião Urbana?”, the answer given in the processes consulted is: Legião Urbana Produções Artísticas Ltda.
This does not mean, however, that the registration allowed the company to prevent any use of the name by former members.
Why can Dado Villa-Lobos and Marcelo Bonfá use the name?
Dado and Bonfá went to court after conflicts related to the use of the expression Legião Urbana in their professional activity. In the original action, in addition to other intentions, they sought recognition related to the brand.
The state court did not decide that they were co-owners of the record. Instead, it partially accepted the request to determine that the company refrain from preventing musicians from using “Legião Urbana” in the exercise of their professional activity. This sentence became the center of a rescission action later taken to the STJ.
On June 29, 2021, the Fourth Panel of the STJ rejected the appeal by Legião Urbana Produções Artísticas that attempted to overturn this solution. For the winning vote, it was an exceptional case in which Dado and Bonfá had directly contributed to the creation, consolidation and dissemination of the name as members of the band.
The decisive point is the limit established by the judgment itself: the right recognized for musicians is linked to the exercise of their professional artistic activity. This is not about handing over to them all the prerogatives of a trademark holder.
What Dado and Bonfá didn't gain from this decision
The 2021 ruling is narrower than some headlines make it seem. According to the STJ itself:
- Dado and Bonfá did not become co-owners of the brand registration;
- the brand was not transferred to the musicians;
- they did not receive general power to license “Legião Urbana” to third parties;
- they did not control official products or exercise brand protection measures reserved for the owner;
- the authorized use was related to the professional artistic activity of the two musicians.
The STJ even used the marketing of official products and brand protection actions as examples of prerogatives that continued with Legião Urbana Produções Artísticas.
Therefore, “they can use the name” and “they own the brand” are legally different statements.
What about the “30 Years of Legião Urbana” tour?
There is a second process that needs to be separated from the dispute over the right to use.
Legião Urbana Produções Artísticas filed a lawsuit seeking to receive a third of the profits from the “30 Anos de Legião Urbana” tour, carried out in 2015 and 2016 by Dado Villa-Lobos and Marcelo Bonfá. The company maintained that there was economic exploitation of its brand.
The Rio de Janeiro Court of Justice had accepted the charge. In 2022, however, the STJ annulled this judgment and ordered the TJRJ to analyze an argument that had not been adequately addressed: the musicians' defense said that, in that context, the expression “Legião Urbana” also corresponded to the title of the band's first album and that the case should consider the copyright involved.
The Copyright Law has a relevant distinction on this point. Isolated names and titles are not, in themselves, protected as copyright, but the law provides protection for the title of a work when it is original and unmistakable with a previous work of the same genre.
The STJ did not decide in that process that Dado and Bonfá's argument would necessarily win. He ordered the TJRJ to examine him.
In the retrial held in 2023, the 14th Chamber of Private Law of the TJRJ once again considered the transfer of one third of the tour results to the producer due. According to information from the court itself reproduced by the press, the judges understood that, in that economic exploitation, it would not be possible to dissociate the name used from the registered trademark, despite the reference to the debut album.
This decision on profits does not amount to canceling the right of artistic use recognized in the other process. These are different questions: one discusses whether Dado and Bonfá can be prevented from using the expression in their professional activity; the other deals with the economic consequences of a specific use made on the 2015 and 2016 tour.
So can Dado and Bonfá introduce themselves as “Legião Urbana”?
Formulation requires care.
What is expressly supported by the decision preserved in the STJ is that Legião Urbana Produções Artísticas cannot prevent Dado Villa-Lobos and Marcelo Bonfá from using the brand in the exercise of their professional artistic activity.
This should not automatically be expanded to the idea that musicians received unrestricted judicial authorization to recreate a new band, explore any product or business under the name Legião Urbana, or act as record holders.
The STJ itself qualified this use as limited. Ownership and other trademark prerogatives remained with the company.
In the same way, the decisions examined specifically concern the conflict involving Dado and Bonfá. They do not grant third parties a general authorization to commercially exploit the name Legião Urbana. For third parties, the ordinary rules of industrial property and the rights of the trademark holder remain relevant.
The point that usually disappears in the controversy
The dispute produced an unusual but not contradictory legal situation.
The company may be the owner of the registered trademark and yet there is a court decision preventing it from exercising this exclusivity against two specific people in a given professional context.
It was precisely this intermediate solution that prevailed in the 2021 trial. The STJ considered that the sentence did not remove ownership of the brand from its owner, but preserved for Dado and Bonfá a possibility of use linked to the professional history that they themselves helped to build.
The most accurate way to summarize the case, therefore, is this: the registration ownership of the Legião Urbana brand remains with Legião Urbana Produções Artísticas, while Dado Villa-Lobos and Marcelo Bonfá have judicially recognized a limited right to use the name in their professional artistic activity. This right did not make them owners of the brand nor authorized unrestricted commercial exploitation.
The lawsuit over tour profits also shows that the right to use the name does not automatically resolve all economic disputes that may arise from each concrete form of use.
