In 2013, international soccer was enriched by a special curiosity: referees suddenly sprayed lines on the pitch with a kind of shaving foam to determine the correct distance of the kicker at a free kick. FIFA is said to have once promised Heine Vilarinho-Diaz (1), the inventor of the free-kick spray, generous compensation for the rights of use. But to this day, the Brazilian has not seen a single dollar of it. Now the story seems to have a happy ending. But first things first. 

From Brazil to the whole world

The Vilarinho-Diaz had already worked in 2000 on a spray that was supposed to keep the free-kick wall at the correct distance of 9.15 meters from the kicker, could be used in all weather and ground conditions, but dissolved again after a short time so as not to leave any permanent marks on the pitch. Initially tested in Brazilian soccer, FIFA used the spray for the first time at the 2013 Club World Cup and then a year later at the World Cup.

Early on, Vilarinho-Diaz and his earlier company “Chemiker do Brasil” claimed that FIFA had promised him 40 million US dollars for the acquisition of all rights to the marking spray. However, after the change of power from Sepp Blatter to the current president Gianni Infantino, FIFA no longer wanted to know anything about this. To this day, the soccer association has released the spray for worldwide production and marketing without Vilarinho-Diaz’ consent and is not the least bit bothered by the patent protection that the Brazilian has established around the world, including Europe, the US, Brazil, Japan, China and Korea.

Inventive or not?

To get to the root of the problem, so to speak, FIFA has tried to invalidate the Brazilian patent BR-PI-0004962 B1 on the grounds of lack of inventive step. In itself, this did not seem to be a hopeless undertaking, because if one looks at the protected composition, it essentially only contains a few foaming surfactants, table salt, water and a propellant – and with precise quantities. For an expert, this is certainly a composition that can be easily circumvented. Nevertheless, the competent court in Rio de Janeiro dismissed the case in March in the first instance. Vilarinho-Diaz is quoted as saying: „This is a victory against the attempt to erase parts of the history of an invention that has changed soccer. The spray known all over the world is Brazilian and the judiciary has now made this clear.“

Changing the horses

Well, it wasn’t quite that simple. In other parts of the world, the inventor did not even try to obtain protection for the composition of his spray. The parallel European patent EP 1268680 B1 or the corresponding US patent US 7,074,264 BB, for example, both claim a „method for temporarily marking distances defined by rules in sports, in which an aqueous foaming composition containing at least two different surfactants and a propellant is applied to an area of a sports field“. In the end, however, this approach can be considered quite smart. By focusing on the process using such foaming spray, the applicant avoids the inventive step problems associated with the rather common composition. On the contrary, since the invention now leaves room to define the spray in very general terms, the scope of protection of the foreign patents is much broader than that of the hotly contested Brazilian case. One could therefore say that FIFA has been aiming at the wrong target.

The cash register is supposed to ring

The ruling will now benefit Vilarinho-Diaz in another lawsuit against FIFA. Since 2017, the Brazilian has been claiming the aforementioned 40 million US dollars in damages from the association for the unauthorized use of the spray.  As reported by Brazilian TV station Globo, the Brazilian Federal Supreme Court STJ has now rejected a final appeal by the soccer association and, after seven years of dispute, has ruled in favor of the inventor on all points of the claim. According to the Brazilian court, FIFA thus deprived the Brazilian of the opportunity to earn money from his product. He had also received false promises, meaning that the association had breached good faith. After the verdict was announced, Vilarinho-Diaz said: „It’s a story of David versus Goliath. FIFA is a giant; it has been a good 23 years of battles. We have made history in world soccer.“ 

The court will make a separate decision on the total damages.

 (1) In other reports, the inventor is referred to as „Heine Allemagne“. However, this is incorrect: „Heine Al-lemagne“ is the first name. The correct name of the inventor is „Heine Allemagne VILARINHO-DIAZ“