For generations, Coca Cola Co. has taught the world to sing – and as the company has become an increasingly global brand, those singing do so in a multitude of languages. After the 2010 FIFA World Cup, however, the company faced at least one legal complication related to that strategy when it was taken to court by a Miami-based composer and producer who claimed that Coca-Cola had unlawfully taken his translation of a song and tried to teach it to the Spanish-speaking world.
The composer, Rafael “Rafa” Vergara Hermosilla, didn’t claim to have written the song, “Wavin’ Flag.” The original version, written and performed by Somali-Canadian rapper K’naan (pronounced KAY-non), was chosen as the centerpiece of Coca-Cola’s $300 million advertising campaign surrounding the World Cup. As part of the campaign, K’Naan wrote a new verse for the “Coca-Cola Celebration Mix,” released in 150 countries, and the company created 12 different duet-versions with local music stars from around the world. For $6,000, Vergara agreed to write a Spanish-language version of the song for Coca-Cola (in conjunction with Universal Music Group, Inc, which was not named in the suit). The dispute arose over whether the agreement entered into with Vergara to write the Spanish-language version properly was a “work for hire” arrangement.
The 1976 Copyright Act defines a “work made for hire,” in part, as, “a work specially ordered or commissioned for use as a contribution to a collective work,” including “as a translation…if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.” Vergara, however, claimed he never agreed to a work for hire arrangement and never would have contemplated accepting the assignment if he knew it was a work-for-hire. When Universal asked him to sign a document stipulating that his was a work-for-hire contract, he refused, and demanded that for the Spanish version, his name appears next to the composer of the original English version.
Vergara, presumably, had a Coke and a smile in June, when a federal district court in Florida issued a preliminary injunction prohibiting Coca-Cola from distributing the Spanish version of the song without posting a conspicuous notice indicating the composer’s contribution to the song. But just as Vergara thought he had put one past the Coca-Cola keeper, the company responded on January 12, filing a renewed motion for summary judgment, stating that discovery made subsequent to the June decision had disproven any of Vergara’s claims to copyright.
Coca-Cola argued multiple points: first, the copyright for the original song belonged to Sony-ATV, and while Coca-Cola had permission to create local versions of the song, it was never capable of granting copyright rights to adapters like Vergara. The company also claimed that Vergara had assigned any rights he had to the work, that his translation was “limited, near-verbatim,” and, as such, not copyrightable, and that he belatedly asserted his copyright interest as a tactical maneuver, “just as Coca-Cola was about to further rely on its right to use.” Finally, the company argued that, as someone who intended to merge his Spanish translation with other copyrightable elements (such as the melody), Vergara could only be a co-owner, and as such, could not sue another co-owner for infringement.
Vergara’s attorneys responded on January 27, disputing Coca-Cola’s claims and stating that the company’s motion, “seeks to re-litigate issues previously decided by the Court, distorts the facts and law to support the positions it advocates and complains of the inequity of a situation Coca-Cola created.” However, the district court sided with Coca-Cola. In Hermosilla v. The Coca-Cola Company (S.D.N.Y. Feb. 23, 2011), the court granted Coca-Cola’s motion for summary judgment, holding that extrinsic evidence uncovered during post-injunction discovery proved that Vergara had assigned his rights to the song. Vergara could not rely upon the preliminary injunction, the court stated, in the face of later discovery that offered a clearer understanding of the facts of the case.
While Coca-Cola continues to grow its brand through songs in many languages, it may face similar claims under both U.S. law and the laws of other jurisdictions. But this time, at least, it appears that Coca-Cola may keep on singing (and teaching others to do the same).