Florida Patent Lawyer Blog

Southern District Court Judge K. Michael Moore recently handed down an equitable and somewhat unique decision regarding a timely dispute over the rights to a Spanish-language version of a Coca-Cola theme song that was created for the 2010 World Cup. At issue in the suit, Vergara Hermosilla v. Coca-Cola Co., No. 10-21418, 2010 WL 2232657 (S.D. Fla. June 2, 2010), was whether the South-Florida based artist retained rights to the content of his work product "Wavin' Flag" - originally performed in English by the artist K'naan - in translating and producing the song. As a Miami-based trademark and copyright attorney, I closely follow such decisions in order to provide up-to-the-minute legal counsel for my clients, many of whom are artist and songwriters.

Coca-Cola had engaged Mr. Hermosilla to produce the work for promotional purposes and he agreed to create the song for the meager sum of one dollar. In return he thought he had negotiated that his name would be listed in the credits - a seemingly reasonable demand given his paltry compensation. In an era where artists are routinely robbed of royalties due to the likes of file-sharing operations like Kaaza.com and Limewire.com, the artist simply desired recognition for his efforts. For some bizarre reason, Coke took issue with this request and chose to fight Mr. Hermosilla on the issue.

After the song had been written, mixed and produced by Hermosilla, Universal Music Group presented him with a contract that did not include naming rights for his production. Hermosilla immediately sent a reply to the company revoking both his license to Coca-Cola to use the song and his agreement for compensation in the amount of one dollar.

After negotiations broke down, Hermosilla sought a preliminary injunction against Coke to prevent the dissemination of the song for as long as the company refused to grant him credit as the producer. Coke claimed that Hermosilla was an employee in a "work-for-hire" transaction that precluded him from taking personal recognition as the artist responsible for creating the work. The judge, thankfully, did not agree with the beverage giant's position.

Judge Moore ruled that because Hermosilla never received consideration for his work (the $1.00) he was entitled to revoke the nonexclusive license to use the copyrighted material. The Judge found that the songwriter's lyrics did not qualify as work-for-hire and that he had exclusive copyright ownership of his translation. He further decided that the songwriter was in danger of being irreparably harmed and that Coke would be preliminarily enjoined from selling or otherwise using the Spanish lyrics without providing songwriter credit.

In a balancing of hardships, Coke was forced to comply with the court's ruling requiring it to conspicuously publish acknowledgment of Hermosilla's contributions to the Spanish language version of the song, and the court cited $15,000,000 in potential losses to Coke for promotional costs if the song were to be prevented from being published through various media outlets that it had contracted with. The Judge ordered that Coke be allowed to air the song, and that Hermosilla was to be credited with the production of the song. All in all, this was a seemingly fair outcome given the conflicting considerations, but it is still unclear why Coke tried to deny Hermosilla acknowledgment for having produced the song.

Last week, the Board of Patent Appeals and Interferences (BPAI) upheld a Patent Examiner's rejection under 35 U.S.C. § 102(e) of a patent application for an invention that was claimed too broadly. As a Miami Patent and Trademark Attorney I follow BPAI decisions on a daily basis, and I constantly seek wisdom from the mistakes of others.

At issue in Ex parte Tosey was a claim to enhance the initiation of a coupling between a wireless digital device and an "interconnected network". The applicant argued that the terms "interconnect network" and "wireless network" are not synonymous as pertains to a prior patent issued to Elliott (US 6,859,135 B1) in 2005. Unfortunately, the applicant failed to clearly make this distinction in the claims.

In the analysis section of the decision, the BPAI indicated comments made by the Patent Examiner, such as, "Appellant (applicant) seems to suggest that Elliott's network is a wireless network and not an interconnected network because it is not a combination of wired and wireless network," and that," the issue of the interconnected network being wireless or wired is not at all claimed." Oops! The BPAI further points out that the applicant's primary claim "merely requires that data is received from an 'interconnected network' which does not preclude a cellular network."

The lesson here is that the BPAI is required to analyze claims in their broadest reasonable interpretation. In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004), and that a BPAI analysis will not read limitations into the claims from the specification, In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Because the primary claim made in Ex parte Tosey failed to recite a distinction between "interconnected network" and "wireless network", the BPAI was compelled to find that there was no such distinction and therefore rejected the claim. It also didn't help that the patent application contained some typographical errors - a general indication of overall sloppiness in preparing the application.

As I have previously discussed in this blog, when prosecuting a patent application in a crowded field of competitors (such as the wireless networking industry) it is absolutely crucial to point out - in the claims - the limitations and distinctions of your invention as compared to those that are already patented. A twisted version of an old adage reads "Ready, Fire, Aim!", which is a very poor strategy for successful patent prosecution.