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.

Can you protect architectural drawings and constructed buildings using copyrights? As a Miami Copyright Attorney with an active copyright docket, this is a question I've been asked more than once.

Generally the answer is yes. An original design of a building created in any tangible medium of expression, including a constructed building or architectural plans, models, or drawings, is subject to copyright protection as an "architectural work" under 17 U.S.C. §102 of the Copyright Act. Protection extends to the overall form as well as the arrangement and composition of spaces and elements in the design but does not include individual standard features or design elements that are functionally required. The term "building" means structures that are habitable by humans and intended to be both permanent and stationary.

But here is the tricky part. Architectural designs created on or after Dec. 1, 1990 are subject to copyright. Also, unpublished architectural designs constructed between Dec. 1, 1990 and Jan. 1, 2003. are subject to copyright.

BUT any designs constructed or published BEFORE Dec. 1, 1990 are NOT subject to copyright. Also, any unpublished and non-constructed designs created BEFORE Dec. 1, 1990 but constructed between Dec. 1, 1990 and Dec. 31, 2002 are NOT subject to copyright. Additional works that are NOT subject to copyright include structures other than buildings, such as bridges, cloverleafs, dams, walkways, etc.

Protection for an architectural work created as a work made for hire on or after December 1, 1990, lasts for 95 years from the date of publication of the work or for 120 years from the date of creation of the work, whichever term is less. A work made for hire is one prepared by an employee within the scope of his or her employment, such as an architect employed by a firm.
Protection for an architectural work created on or after December 1, 1990, by an individual (not as a work made for hire) lasts for the life of the author plus 70 years.

To recap, architectural works are subject to copyright, but care must be taken to record the dates of important events, such as dates of publication and construction, in order to determine whether you are dealing with a work that may not be eligible for copyright.

In 2008, photographer Mike Hipple took a photo of a famous sculpture by Jack Mackie in Seattle. The photo at issue (see it here) was sold to a stock photo company subsequently used in its for-pay catalog. As a Miami Copyright Attorney, this case interests me because it brings up subtle copyright issues.

This not an issue of direct copyright infringement. The copyright in the sculpture is directed to a 3D work of art. The photographer did not make a 3D copy of the sculpture. Instead, the photographer made a 2D derivative work of the sculpture. Thus, if there is any infringement it is infringement of the right to make derivative works.