Copyright litigation 2010
1. SOURCES OF LAW
1.1. WHAT ARE THE PRINCIPAL SOURCES OF LAW AND REGULATION RELATING TO COPYRIGHT AND COPYRIGHT LITIGATION? (BRIEFLY DESCRIBE THE ROLE OF INTERNATIONAL, FEDERAL OR STATE LAWS AND RELEVANCE OF COURT DECISIONS, LIST AND BRIEFLY DESCRIBE RELEVANT STATUTES AND INTERNATIONAL TREATIES).
The sources of national law relating to copyright law and copyright litigation are:
· Federal Copyright Law of 1996 (the Copyright Law);
· Industrial Property Law of 1991;
· Federal Penal Law of 1931;
· Federal Civil Code of 1928;
· Federal Code of Administrative Proceedings of 1994;
· Federal Code of Civil Proceedings of 1943;
· Federal Code of Penal Proceedings of 1931;
· Customs Law of 1995 (the Customs Law); and
· Cinematography Law of 1992.
The sources of national regulations to laws relating to copyright or litigation are:
· Regulations to the Copyright Law of 1998;
· Regulations to the Industrial Property Law of 1994;
· Tariff for Public Performance in General;
· Tariff for Theatrical Performance;
· Tariff for Film Exhibition;
· Tariff for Public Performance in Hotels; and
· Tariff for Broadcasting of Musical Works.
The sources of international law relating to copyright or litigation are:
· Berne Convention for the Protection of Literary and Artistic Works, Paris Act;
· Universal Copyright Convention as revised in 1971;
· Inter-American Copyright Convention on Literary, Scientific and Artistic Works;
· Convention for the Producers of Phonograms Against Unauthorised Reproduction of their Phonograms;
· Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organisations;
· Convention Relating to the Distribution of Programme-Carrying Signals Transmitted by Satellite;
· Treaty on the International Registration of Audiovisual Works;
· WIPO Copyright Treaty;
· WIPO Performances and Phonograms Treaty;
· Agreement on Trade-Related Aspects of Intellectual Property Rights;
· North American Free Trade Agreement; and
· A number of free trade agreements without specific IP rules.
1.2. WHAT IS THE ORDER OF PRIORITY OF THE RELEVANT SOURCES, IE WHICH TAKE PRECEDENT IN THE EVENT OF A CONFLICT?
Constitutional fundamentals dictate that federal laws, such as the Copyright Law and international treaties, are of equal application. However, disputes arising from contradictions or loopholes in the federal laws, have lead the Supreme Court of Justice to declare that international treaties pre-empt federal laws. This means that international treaty rules, when drafted as provisions having self-executing scope, shall prevail if federal laws contradict.
2. COURT AND ADMINISTRATIVE SYSTEM
2.1. IN WHICH COURTS ARE COPYRIGHTS ENFORCED? ARE THEY SPECIALISED COPYRIGHTS COURTS? IF NOT, WHAT LEVEL OF EXPERTISE CAN A COPYRIGHT HOLDER EXPECT FROM THE COURTS?
Copyrights can be enforced before administrative, civil or criminal bodies or courts. The action available depends on the type of rights enforced.
Administrative actions can be brought before the Patent and Trademark Office (Mexican Industrial Property Institute or IMPI, by its initials in Spanish) or the Copyright Office. IMPI is in charge of enforcing copyright and neighbouring exclusive economic rights through infringement actions. The reason is that the Copyright Law of 1996 remits copyright enforcement actions to the procedural rules of industrial property law. Since IMPI performed as the enforcer of patent and trade mark rights for many years, it was easy for Congress to insert copyright within IMPI’s jurisdiction. IMPI is an administrative body dealing with the registration aspects of industrial property rights. Congress appointed it because of the specialized nature of patents and trade marks and the chance that administrative proceedings could be shorther than judicial proceedings. On the other hand, the Copyright Office – another specialised government body dealing with registration and other administrative endeavours arising from copyright law – had no experience whatsoever in enforcing rights at the time Congress was discussing a new copyright procedural system back in 1996. With the advent of the Copyright Law of 1996, the Copyright Office was empowered to render sanctions against certain administrative violations of Copyright Law, including protection of moral rights of paternity and integrity, but not to enforce economic rights.
Decisions made by IMPI can be appealed before an administrative justice tribunal that reviews all sorts of resolutions coming from bodies or instances of the executive branch. The name of the tribunal can be translated as the Federal Tribunal for Tax and Administrative Affairs. The Tax Tribunal, as it is called in short, has created an ad hoc chamber or section that deals exclusively with intellectual property matters. The resolutions of the Tax Tribunal can be reviewed by federal judicial courts, namely circuit courts.
Civil actions can be either brought before federal or local civil courts, when parties dispute remuneration rights, such as unpaid royalties deriving from licence, assignment or other contracts, or remuneration rights that authors enjoy from public exploitation of their works after they have assigned their exclusive economic rights to third parties. Likewise, civil actions can be taken to pursue damages from violations to exclusive economic rights. However, such actions are available only after IMPI resolutions declaring infringement of rights have become firm. Civil courts have no specialisation in copyright affairs.
Criminal actions can be brought before criminal courts, in the case of copyright piracy activities or infringement that is perpetrated in bad faith and on a commercial scale. The Federal Constitution has conferred on the Attorney General the monopoly to take criminal actions. The role of the Attorney General’s Office is to investigate copyright crimes mainly through a specialised unit that gathers district attorneys that are qualified in the field. By contrast, criminal courts have no specialisation in copyright law.
2.2. IS THERE ANY ADMINISTRATIVE BODY (EG A COPYRIGHT OFFICE)? IF SO, DOES IT HAVE ANY JURISDICTION IN COPYRIGHT LITIGATION?
The copyright Office is in charge of registering copyrighted works. Mexico follows a registration system, although registration is voluntary. Registration is ‘declarative’ and not ‘constitutive’ of copyright. However, authors or copyright holders have found the registration system to be useful, since registration represents prima facie evidence of copyright ownership, and is actually the most practical vehicle to prove ownership. Courts like copyright certificates. As stated above, the Copyright Office is entitled to render sanctions against certain aspects of the Copyright Law, including moral rights protection, although this latter capacity can only be inferred, since the statute is not express in this respect.
2.3. TO WHAT EXTENT ARE COURTS WILLING TO CONSIDER, OR ARE BOUND BY, THE OPINIONS OF OTHER NATIONAL OR FOREIGN COURTS THAT HAVE HANDED DOWN DECISIONS IN SIMILAR CASES?
For obvious reasons, courts are not bound to follow resolutions rendered by foreign courts. However, sometimes IMPI or civil courts have been persuaded, or at least become interested, when parties have cited foreign awards in their allegations.
2.4. WHO CAN REPRESENT PARTIES BEFORE THE COURTS HANDLING COPYRIGHT LITIGATION?
Licensed attorneys-at-law, empowered by the plaintiff or defendant, if the matter takes place in a judicial court. If the matter is criminal, district attorneys, empowered under law, handle the proceedings. Any person can intervene at IMPI, in the capacity of representative of the conflicting parties. Collecting societies that have fulfilled legal requirements to represent affiliate members can take actions on their behalf. In a recent case, a defendant film exhibitor alleged that the plaintiff, a collecting society representing music composers, had no standing to bring an action since it did not file the powers of attorneys bestowed by its members and required under procedural laws when actions are filed on behalf of others. The Circuit Court stated that the collecting society was not required to show powers of attorney to take the action because it had a ‘privileged status’. The defendant moved at the Supreme Court of Justice for certiorari, arguing that it was a violation of constitutional principles that the judges recognize that parties enjoy a ‘privileged status’ in court proceedings. The case has been referred to the Supreme Court and resolution is pending.
2.5. WHAT IS THE LANGUAGE OF THE PROCEEDINGS? IS THERE A CHOICE OF LANGUAGE?
The language of proceedings before the courts or administrative bodies can only be Spanish.
3. SUBSTANTIVE LAW
3.1. WHAT TYPES OF WORKS ARE COPYRIGHTABLE UNDER YOUR LAW? DOES YOUR NATIONAL LAW PROVIDE FOR A CLOSED LIST OF COPYRIGHTABLE WORKS OR FOR AN OPEN LIST?
The Copyright Law has employed the Berne Convention expression of ‘literary and artistic works’, which are original creations in literature, arts and science. In keeping with this, the notion of copyrightable works is broad and inclusive so as to consider any creative expressions that can be referred to as works of authorship. Likewise, the Copyright Law lists copyrighted works into the following non-exhaustive categories: literary works; musical works; dramatic works; choreographic works; paintings or drawings; sculptures or plastic works; architectural works; works of applied arts, including textile and graphic designs; compilations, characterised as encyclopedias, anthologies, and other related works; photographs, radio programmes; films and other audiovisual works; computer software; graphic digital works; audiovisual digital works; and databases.
3.2. DOES THE AUTHOR OR A WORK HAVE TO BE A NATIONAL OF YOUR COUNTRY FOR THE WORK TO QUALIFY AS COPYRIGHTABLE OR DOES A WORK QUALITY FOR COPYRIGHT PROTECTION IRRESPECTIVE OF THE NATIONALITY OF THE AUTHOR?
The author of a work does not have to be a national of Mexico for the work to qualify as copyrightable and therefore, works qualify for copyright protection irrespective of the nationality of the author. The copyright Law states that foreign copyright owners enjoy the same rights as nationals, pursuant to the international treaties to which Mexico has subscribed. As for neighbouring rights owners, the Copyright Law extends protection to performing artists, phonogram (sound recordings) producers or broadcasting organizations who have first fixed their performances, sound recordings or broadcast signals in a foreign land, in conformity with international treaties on neighbouring rights.
3.3. WHAT TYPES OF RIGHTS ARE COVERED BY COPYRIGHT? TO WHAT EXTENT ARE MORAL RIGHTS COVERED BY COPYRIGHT?
Generally speaking, copyright affords to authors ab initio economic and moral rights. As an exception, copyright confers economic rights on audiovisual producers and neighbouring rights to video recording producers. Likewise, copyright affords economic rights to commissioners of works in the case of works made for hire.
Moral rights are personal to authors, cannot be transferred and are perpetual.
Economic rights can be divided into exclusive rights to authorize or prohibit and remuneration rights. The latter accrue in favour of authors when they have assigned their exclusive rights to third parties. Authors contributing to audiovisual productions enjoy remuneration rights from the exhibitor, broadcaster or other user of the audiovisuals. All economic rights – both the right to authorize or prohibit and remuneration rights – can be assigned.
3.4. WHAT DEFENCES ARE AVAILABLE TO AN ALLEGED INFRINGER? TO WHAT EXTENT CAN ‘FAIR USE’ OR ‘FAIR DEALING’ BE USED AS A DEFENCE? IF THESE DOCTRINES DO NOT EXIST, ARE THERE ANY COMPARABLE LIMITATIONS?
Alleged infringers can bring defences on different grounds. The first layer of defence is that the plaintiff: i) is not the author of the work or has no rights to it; or ii) that the creation does not qualify as a copyrightable work. The second layer of defence is that the defendant: i) did not use or exploit (copy in whole or part, distribute, publicly perform or transform) the work; or ii) that the use made was permitted by the law because of a limitation of economic rights, or was made outside the scope of the law, in particular the infringement provisions.
3.5. IS THERE A REQUIREMENT OF COPYRIGHT REGISTRATION? IS COPYRIGHT REGISTRATION REQUIRED TO ENFORCE A COPYRIGHT, IE TO OBTAIN DAMAGES OR OTHER RELIEF? IS A COPYRIGHT DEPOSIT REQUIRED? IS A COPYRIGHT NOTICE REQUIRED? WHAT ARE THE CONSEQUENCES, IF ANY, FOR FAILURE TO MAKE A COPYRIGHT DEPOSIT OR TO DISPLAY A COPYRIGHT NOTICE?
Copyright protection is not subject to registration, not even to recover damages or other forms of relief. The Copyright Office registers works, but copyright holders do not have an obligation to register. Deposit is not considered under Copyright Law. A copyright notice is also not a requirement for protecting rights or for taking actions. However, the Copyright Law considers it an administrative infringement, subject to fines, if notices are not properly affixed onto copies of works subject to distribution. That provision goes against the domestic system and attempts to adhere to Berne Convention principles.
3.6. HOW LONG DOES COPYRIGHT PROTECTION LAST?
The term of protection of economic rights is life of the author plus 100 years. The term is applicable to every work without exception. The Copyright Law does not provide special terms for work-for-hire or other situations, in which the life plus 100 years rule cannot be applied.
3.7. HOW IS COPYRIGHT INFRINGEMENT ASSESSED? IS ACTUAL COPYING TO BE PROVED OR IS SUBSTANTIAL SIMILARITY SUFFICIENT TO ESTABLISH INFRINGEMENT?
The Copyright Law is unclear in this respect. In principle, from the reading of the statute, it appears that in order to infringe, copying needs to be literal. However, in practice courts have decided cases using the doctrine of substantial similarity.
3.8. ARE THERE ANY PARTICULARITIES OF ASSESSING COPYRIGHT INFRINGEMENT FOR SPECIFIC TYPES OF WORKS (EG SOFTWARE)?
The Copyright Law does not contemplate particularities for assessing infringement of any works, including software. In practice, infringement shall be examined taking into consideration the nature or category of works. For example, copying of musical works shall depend on issues like the musical structure, metric and sequence, harmony or melody used. In the particular case of software, theories like abstraction tests are valid and can be followed.
3.9. CAN A COPYRIGHT BE ENFORCED AGAINST A TRADE MARK, A DOMAIN NAME, A TRADE NAME, A PSEUDONYM OR OTHER DISTINCTIVE SIGNS?
Copyright can certainly be enforced against trade marks consisting of artworks or copyrighted designs. Likewise, the Copyright Law affords copyright related rights – called ‘reserved rights’ – to characters, titles of publications and artistic names. The law grants infringement actions against users of reserved rights when used without consent, no matter if used as trade marks or distinctive signs. However, if the user of the copyrighted work or reserved rights obtains a trade mark registration, it will require cancellation based on the copyright or reserved rights. Reserved right holders can also request the transfer of domain name registrations by virtue of the Local Dispute Resolution Policty (LDRP), in connection with .mx domains.
3.10. ON WHAT GROUNDS CAN A COPYRIGHT BE INVALIDATED?
Copyright can be invalidated on the basis that it is not a copyrightable work of authorship, but merely a non-original expression of an idea. Copyright registrations can be annulled for the same reasons as in paternity disputes between a registrant and the true author or copyright owner.
3.11. TO WHAT EXTENT CAN ENFORCEMENT OF A COPYRIGHT EXPOSE THE COPYRIGHT HOLDER TO LIABILITY FOR AN ANTITRUST VIOLATION?
A copyright holder can be exposed to liability for antitrust violation to the extent that they carry out an uncompetitive practice by using the work in abuse of the respective rights. For example, that by using the work the right holder excludes competitors from the market.
3.12. ARE THERE ANY GROUNDS ON WHICH AN OTHERWISE VALID COPYRIGHT CAN BE DEEMED UNENFORCEABLE, OWING TO MISCONDUCT BY THE COPYRIGHT HOLDER, OR FOR SOME OTHER REASON? IS THERE A TIME LIMIT FOR BRINGING AN INFRINGEMENT ACTION?
Nothing in addition to the foregoing.
3.13. CAN A COPYRIGHT HOLDER BRING A LAWSUIT CLAIMING BOTH COPYRIGHT INFRINGEMENT AND UNFAIR COMPETITION FOR THE SAME SET OF FACTS?
A copyright holder can bring legal actions claiming both copyright infringement and unfair competition for the same facts. The two actions are not mutually exclusive. A copyright action would focus on the protection of a work – for example, computer software that is distributed or commercialised in a particular form. Unfair competition would focus on the uncompetitive practices that a person carries out in order to distort the market – for example, by making and distributing unauthorized copies of the software, or using marks and other distinctive features of the original product with the result that consumers become confused.
4. PARTIES TO LITIGATION
4.1. WHO CAN SUE FOR COPYRIGHT INFRINGEMENT (COPYRIGHT HOLDER, EXCLUSIVE LICENSEE, NON-EXCLUSIVE LICENSEE, DISTRIBUTOR)? DOES A LICENSEE NEED TO BE REGISTERED TO BE ELIGIBLE TO SUE?
The copyright holder, as the owner of the economic or moral rights, is eligible to sue for infringement; royalty collection or recovery; cancellation; paternity disputes; or in general take any action in connection with the rights provided under the Copyright Law. Copyright holders can only assign their economic rights. Being derivative copyright owners, assignees of economic rights can only sue on the basis of contracts executed in writing and recorded at the Copyright Office. Audiovisual producers can bring actions in connection with their audiovisuals as well as parties who have commissioned the realisation of the works. Neighbouring right holders are entitled to take action to enforce their rights. Licensees of copyright or neighbouring rights can bring actions based on the licence agreement, provided that the licensor grants to the licensee the right to defend their rights and that the agreement is recorded.
4.2. UNDER WHAT CONDITIONS, IF ANY, CAN AN ALLEGED INFRINGER BRING A LAWSUIT TO OBTAIN A DECLARATORY JUDGMENT ON NON-INFRINGEMENT?
A declaratory judgment of non-infringement is not an action recognised by either the Copyright Law or general procedural laws. Thus, non-infringement can only be raised as a defence in infringement proceedings.
4.3. WHO CAN BE SUED FOR COPYRIGHT INFRINGEMENT? CAN THE COMPANY DIRECTORS BE SUED PERSONALLY? UNDER WHAT CONDITIONS, IF ANY, CAN SOMEONE BE SUED FOR INCLUDING OR CONTRIBUTING TO COPYRIGHT INFRINGEMENT BY SOMEONE ELSE?
Users of works can be sued for copyright infringement when they have not been authorized by the copyright holder. Users can also be sued for collection of royalties or remuneration rights when they have used the works without authorisation from the copyright holder, and have not paid their remuneration duties, deriving form the law or from contracts. The law understands ‘user’ to mean the individual or corporation:
i) making copies;
ii) distributing copies;
iii) communicating to the public; or
iv) transforming a copyrighted work.
Directors, managers, representatives, members of management committees or perhaps shareholders of companies would personally respond if the company that they invest in, manage, or represent, has been convicted of a crime.
Neither the Copyright Law nor the general procedural laws recognise the theories of contributory infringement or vicarious liability.as such. Criminal laws provide rules that can only be proximate to contributory infringement. For example, the Federal Penal Code prescribes the circumstances under which somebody is deemed to commit a crime. However, they are restricted to situations where participants knowingly take positive steps to assist those who have ultimately perpetrated the crime. Likewise, the Penal Code recognises specific secondary liability when third parties supply the ‘raw materials’ or consumables’ for reproducing works.
4.4. IS IT POSSIBLE TO ADD OR SUBTRACT PARTIES DURING LITIGATION?
It is not possible to add parties during litigation. It is not possible to subtract though, if the plaintiff reaches settlement with one or more co-defendants notifies the settlement to the court and the proceedings continue against the non-settling co-defendants(s).
5. ENFORCEMENT OPTIONS
5.1. WHAT OPTIONS ARE OPEN TO A COPYRIGHT HOLDER WHEN SEEKING TO ENFORCE ITS RIGHTS IN YOUR COUNTRY?
As explained above, copyright holders seeking to enforce rights have alternatives, depending on the type of infringement or violation perpetrated. Broadly speaking, copyright holders can explore civil, criminal or administrative actions. Each of the aforementioned routes follows their own procedures and has different measures and remedies.
5.2. ARE CRIMINAL PROCEEDINGS AVAILABLE? IF SO, WHAT ARE THE SANCTIONS?
Criminal proceedings are available, in essence, against different forms of copyright piracy, for example when users of works have acted in bad faith on a commercial scale. The sanctions are prison, fines and other things that would typically apply in criminal law. Prison terms are generally high. For example, making or distributing pirated copies or works can lead to prison terms of up to ten years. In fact, some copyright piracy crimes have been elevated to the status of felonies. The foregoing means that once the crime has been indicted and the judge has attracted the case, the alleged pirate or pirates shall be remanded in custody during the trial until sentence is served and the crime confirmed or disregarded. Additional prison terms can be imposed if district attorneys bring charges and actually prove that pirates acted in organised crime groups.
5.3. ARE BORDER MEASURES AVAILABLE?
The Customs Law provides that border measures are applicable in connection with copyright enforcement proceedings. The scope of the Customs Law is narrow and requires that the party asking for the border measure identifies the vessel carrying containers with pirated works. In practice, the Customs Office has taken been instrumental in assisting criminal and administrative authorities as well as plaintiffs to implement border measures, when there is little or no information about the vessels or containers. Copyrights or trade marks are not subject to registration with the Customs Office. However, the system has still worked well, since customs officers receive from copyright holders lists or catalogues with depictions of their goods and organize training sessions in order to learn how to differentiate between original and pirated copies.
5.4. IS IT COMPULSORY TO SEND A CEASE AND DESIST LETTER TO AN ALLEGED INFRINGER BEFORE COMMENCING COPYRIGHT INFRINGEMENT PROCEEDINGS? WHAT ARE THE CONSEQUENCES, IF ANY, FOR MAKING UNJUSTIFIED THREATS OF COPYRIGHT INFRINGEMENT?
It is not compulsory to send a cease and desist letter to an alleged infringer before commencing copyright infringement proceedings. Delivering a cease and desist letter has been a common practice by litigators and copyright holders. Sometimes infringers have filed criminal actions against the signatories of such letters based on libel or slander, arguing that they have been affected by unjustified threats. However, such criminal actions have been unsuccessful.
5.5. TO WHAT EXTENT ARE COURTS WILLING TO GRANT CROSS-BORDER OR EXTRA-TERRITORIAL INJUNCTIONS?
The issue of cross-border or extra-territorial injunctions has not been tested before the court system of Mexico. Procedural rules allow judges to declare extra-territorial injunctions, for example, for violations to the Mexican Copyright Law perpetrated by parties domiciled outside Mexico. However, since the question has never been raised in practice, it would be hard to know if judges would be willing to support and petition orders such as this.
5.6. TO WHAT EXTENT DO COURTS RECOGNISE THE BLOCKING EFFECT OF ‘TORPEDO’ ACTIONS ABROAD?
Blocking ‘torpedo’ actions has never been raised as an issue before Mexican courts.
5.7. TO WHAT EXTENT ARE ALTERNATIVE DISPUTE RESOLUTION (ADR) METHODS (SUCH AS ARBITRATION OR MEDIATION) AVAILABLE TO RESOLVE COPYRIGHT DISPUTES? HOW WIDESPREAD ARE ADR METHODS AND IN WHICH SECTORS?
ADR has become an important method for resolving disputes. Since ADR, but more particularly arbitration, has been used more frequently, a number of cases have arrived at court, including at the Supreme Court of Justice, which have set criteria under the framework of the New York Convention, for how disputes can be arbitrated, how awards can be executed, and under what conditions they can be challenged. Copyright arbitration has been growing in parallel to general commercial arbitration, with an emphasis on the film industry. More and more licence or other agreements relating to copyright or entertainment law matters are negotiated with arbitration clauses. Likewise, general arbitration institutions like the Mexican Chamber of Commerce or Centro de Arbitraje de Mexico have lists of copyright experts. The copyright Office is empowered to act as an arbitration institution as well. It keeps a list of arbitrators which is updated every year and published in the federal government’s gazette. On an international level, copyright holders and users have used arbitration systems such as the Independent Film and Television Alliance (IFTA) or the new WIPO arbitration project on entertainment law. Both have Mexican experts on their lists.
6. PROCEDURE IN CIVIL COURTS
6.1. WHAT IS THE FORMAT OF COPYRIGHT INFRINGEMENT PROCEEDINGS?
The format of copyright infringement proceedings depends on the action filed. The Copyright Law, applicable in substantive matters, and the Federal Code of Civil Proceedings govern litigation in federal courts. In local litigation, the states’ procedural codes substitute the federal legislation, but the Copyright Law continues to apply.
Considering that civil proceedings are governed by either federal or local procedural codes, actions claiming remuneration or damages or requesting the cancellation or registrations must follow these statutes’ norms and rules. Such rules cover filing and responding to complaints; hearings; incidental recourses; allegations; sentences; and appeal. Preliminary measures are possible under the procedural codes, but are more restrictively applied in practice, in comparison to the Law on Industrial Property.
Criminal proceedings are exclusively federal and are governed by the Copyright Law, the Penal Code, and the Federal Code of Penal Proceedings. Criminal proceedings are divided into preliminary inquiries and a process or trial. The investigative stage starts with a private claim by the copyright owner through private actions, or by a public claim (depending on the type of crime) and terminates with a resolution granting or denying indictment. The fact that a criminal action is private means that the federal prosecutor can only start to investigate after a copyright owner or their representative has filed a claim. Accordingly, title and representation have to be proved. The copyright owner can control the initiation and termination of the proceeding by withdrawing the claim at any time.
The federal prosecutor or district attorney is in charge of the investigation, and is therefore empowered to collect evidence to conclude that a crime has been committed and that somebody presumably inflicted it. Among other investigative measures, the district attorney can inspect premises and seize objects. If inspection is made of private property, a search and warrants order, issued by a judge, is required. After indictment, the matter is brought before a district judge, who then starts a criminal process or trial if, after assessment of the matter, they arrive at a prima facie conclusion that there is a crime to judge. The alleged defendant is granted a constitutional right to reply to the charges and to be rendered formally imprisoned or liberated if charges have no merit. The judge conducts the criminal trial with the General Attorney’s Office as the plaintiff and the alleged criminal as defendant. The victim may assist the General Attorney in the prosecution of the trial. Both the General Attorney’s Office and the defendant, if convicted, may file an appeal before a unitary court and then file a review at a circuit court.
Copyright administrative proceedings are federal as well. The Copyright Law, the Law on Industrial Property, the Federal Code of Administrative Proceedings, and the Federal Code of Civil Proceedings govern them. Sometimes, the civil proceedings code can supplement the administrative code, in particular when a given procedural norm is insufficient.
Administrative contentious proceedings are summary in nature and are intended to avoid procedural steps like incidents or intermediate appeals. In theory, they are generally restricted to the filing of a complaint, an answer, and final arguments. Preliminary measures are possible before or even during the principal proceeding, including preliminary injunctions, inspections, and seizures, conducted at the premises of the alleged infringer, a third party, or at a customs office. Resolutions can be appealed before the federal administrative court and reviewed at a circuit court.
6.2. ARE DISPUTED ISSUES DECIDED BY A JUDGE OR A JURY?
Disputed issues are always decided by judges in a court proceeding, or by administrative officers if held at IMPI.
6.3. TO WHAT EXTENT ARE DOCUMENTS, AFFIDAVITS, WITNESSES AND/OR (COURT-APPOINTED OR PRIVATE) EXPERTS USED? IS IT POSSIBLE TO CROSS-EXAMINE WITNESSES?
Civil and criminal proceedings allow all forms of evidence under the procedural laws. Administrative proceedings are subject to certain restrictions, since parties can only submit testimonies and confessions in writing and therefore cross-examination is not possible. In civil and criminal instances the value of affidavits is small. In administrative proceedings, affidavits are equal to testimonies and can have persuasive value. Expert testimonies are required to comply with formalities. Both parties appoint experts who render testimonies in writing and the court or IMPI brings third party experts to render their opinion when testimonies conflict.
6.4. TO WHAT EXTENT IS SURVEY EVIDENCE USED (EG TO PROVE SUBSTANTIAL SIMILARITY)? WHAT IS ITS RELEVANCE IN PROCEEDINGS (EG PARTY ALLEGATION, EVIDENCE)? WHO DECIDES WHICH CONSUMERS ARE QUESTIONED IN THE SURVEY (EG THE COURT, COURT EXPERT)? WHAT LEVEL OF COST SHOULD ONE EXPECT TO INCUR TO CARRY OUT A SURVEY? ARE THESE COSTS RECOVERABLE FROM THE LOSING PARTY?
Survey evidence is principally used at IMPI in connection with trade mark matters. It has been never used in copyright proceedings, taking into account that copying, including issues of substantial similarity, are not questions addressed to consumers or the general public. Copying is instead addressed by experts in their field.
6.5. IS EVIDENCE OBTAINED FOR CRIMINAL PROCEEDINGS ADMISSIBLE IN CIVIL PROCEEDINGS, AND VICE VERSA?
Evidence obtained for criminal proceedings is admissible in civil proceedings, and vice versa.
6.6. TO WHAT EXTENT IS PRE-TRIAL DISCOVERY PERMITTED? IF IT IS PERMITTED, HOW IS DISCOVERY CONDUCTED? IF IT IS NOT PERMITTED, WHAT OTHER, IF ANY, MECHANISMS ARE AVAILABLE FOR OBTAINING EVIDENCE FROM AN ADVERSE PARTY OR FROM THIRD PARTIES?
Discovery is not available under any procedural laws. In administrative proceedings, any party can ask IMPI to order the adverse party to produce evidence. The rule states that the piece of evidence needs to be specified and be connected to the issues subject to the litigation.
6.7. WHAT LEVEL OF PROOF IS REQUIRED FOR ESTABLISHING INFRINGEMENT OR INVALIDITY?
In order to establish infringement or invalidity, proof must convincingly, objectively and directly demonstrate the wrong or contribute, together with other proof, to demonstrate the wrong.
6.8. HOW LONG DO COPYRIGHT INFRINGEMENT PROCEEDINGS TYPICALLY LAST? IS IT POSSIBLE TO EXPEDITE THIS PROCESS?
Civil proceedings may take from one to three years, and sometimes can be longer if the subject matter involved is more complex. Administrative proceedings take from two to five years. They could be expedited, but that depends on the backlog of IMPI. Criminal matters can be quick, depending on whether the alleged infringers were caught re-handed and thus indicted in a short time.
6.9. WHAT OPTIONS, IF ANY, ARE AVAILABLE TO A DEFENDANT SEEKING TO DELAY THE PROCEEDINGS? UNDER WHAT CONDITIONS, IF ANY, CAN PROCEEDINGS BE STAYED? HOW CAN A PLAINTIFF COUNTER DELAYING TACTICS OF A DEFENDANT?
Defendants can utilise tactics to delay proceedings. There are a number of alternatives to take. For example, they can bring frivolous counter-actions to challenge the copyright, taking advantage of the fact that the courts or IMPI have to decide on the counter-actions prior to addressing the principal action. It is hard for a plaintiff to counter delay these tactics aside from asking the court or IMPI to resolve them as quickly as possible.
7. FINAL REMEDIES
7.1. WHAT REMEDIES ARE AVAILABLE AGAINST A COPYRIGHT INFRINGER (FINAL INJUCTION, DELIVERY UP OR DESTRUCTION OF INFRINGING GOODS, PUBLICATION OF THE DECISION, RECALL-ORDER, MONETARY REMEDIES, ETC.)?
The typical remedies available in civil matters are monetary. Remedies in administrative matters are typically final injunction; fines; shutdown of establishment; and destruction of seized goods. Remedies in criminal matters are typically imprisonment; fines; and remedies used by judges to repair affection to society.
7.2. TO THE EXTENT IT IS POSSIBLE TO OBTAIN A FINAL INJUNCTION AGAINST FUTURE INFRINGEMENT, IS IT EFFECTIVE AGAINST THE INFRINGER’S SUPPLIERS OR CUSTOMERS?
Final injunctions can be effective against the infringer’s suppliers or customers, or in general, can be employed against future infringements.
7.3. WHAT MONETARY REMEDIES ARE AVAILABLE AGAINST A COPYRIGHT INFRINGER (REASONABLE ROYALTY, LOST PROFITS, ACCOUNT OF PROFITS, OR SOME OTHER BASIS)? ARE PUNITIVE DAMAGES AVAILABLE? IF SO, UNDER WHAT CONDITIONS? ARE LIABILITY AND QUANTUM OF MONETARY REMEDIES ASSESSED AT THE SAME TIME BY THE COURT OR IS THE QUANTUM ASSESSED AT A SEPARATE, LATER STAGE FROM LIABILITY?
The civil procedural code stipulates a so-called ‘damage’ and ‘prejudice’ theory which means that a plaintiff can recover: i) economic loss – including lost profits and royalties; and ii) profits that the plaintiff would have earned if the infringement had not been committed, or both.
The Copyright Law contemplates an ad hoc formula, applicable once copyright infringement is found. The theory is known as the 40 per cent rule, which dictates that judges shall declare damages for economic or moral rights violation to be at least 40 per cent of the ‘sale price’ obtained by the infringer from ‘selling copies’ of works or ‘rendering services’. The 40 per cent rule does not represent punitive or statutory damages, but rests closer to these than lost profits or reasonable royalties. The difference is that it does not trigger automatically from infringement, despite the language employed in the law being quite straightforward. Damages need to be proved first, otherwise the 40 per cent rule would go against civil law and the Constitution. The rule functions as a minimum standard provision applicable when damages can be proved. The award cannot then be rendered for an amount that is less than the sale price of the infringing copy or service provided (applicable to, for example, public performance or other use of a work not involving distribution of copy). What the author or copyright holder is required to prove in order to request application of the 40 per cent rule is that the infringer of a patrimonial copyright right made an income or revenue by selling copies of a work or by rendering a service using a work, without having obtained authorisation from the copyright holder or without having paid a royalty.
The rule is more complicated in the case of moral rights, since the author claiming damages for violation of moral right would first need to show that the infringement triggered economic harm. There are no decisions awarding damages for violation of moral rights.
8. PRELIMINARY RELIEF
8.1. IS PRELIMINARY RELIEF AVAILABLE? IF SO, WHAT PRELIMINARY MEASURES ARE AVAILABLE (EG PRELIMINARY INJUNCTION) AND UNDER WHAT CONDITIONS? IS URGENCY A CONDITION FOR THE COURT TO GRANT PRELIMINARY RELIEF? IF SO, HOW IS IT DETERMINED?
Civil procedure laws provide preliminary measures, but courts apply them so restrictively that they are never granted.
On the administrative side, the range of preliminary measures is plentiful.
Accordingly, plaintiffs can seek preliminary injunctions, seizures and site inspections, among others. The downside is that defendants can lift preliminary measures easily by posting a bond or a counter-bond (if IMPI previously required the plaintiff to file a bond as a warranty against damages and in order to grant the preliminary measures requested).
In criminal proceedings, district attorneys can ask judges to render search and warrant orders in order to conduct raids and ultimately seize infringing copies, review premises, documents or evidence or to arrest people.
8.2. IS EX PARTE RELIEF AVAILABLE, WHERE THE DEFENDANT IS GIVEN NO NOTICE AT ALL? IF SO, UNDER WHAT CONDITIONS?
Preliminary injunction proceedings before IMPI are ex parte or inaudita altera pars. Proceedings are effective and relief is granted and implemented quickly. In fact they are so quick that the examiners at IMPI never stop to make a prima facie infringement analysis. However, in order to maintain balance they discharge injunctions by requesting bonds from alleged infringers, who after posting them, go back to their activities. Bearing that in mind, the system is very inefficient.
8.3. ARE PROTECTIVE WRITS KNOWN IN YOUR COUNTRY AND WHAT EFFECTS DO THEY HAVE ON THE PRELIMINARY INJUNCTION PROCEEDINGS?
Protective writs are not known in Mexico.
8.4. IS THE PLAINTIFF ENTITLED TO ASK FOR AN ORDER THAT THE DEFENDANT’S PREMISES ARE SEARCHED AND A DESCRIPTION OF THE INFRINGING GOODS (AND THE ACCOUNTING DATA RELATING THERETO) IS MADE IN ORDER TO ESTABLISH PROOF OF INFRINGEMENT (SAISIE-CONTREFACON)? IF NOT, WHAT OTHER MECHANISMS, IF ANY, ARE AVAILABLE FOR SEIZING AND PRESERVING EVIDENCE FOR TRIAL?
In administrative and criminal proceedings, a plaintiff is entitled to ask for an order that the defendant’s premises are searched and a description of the infringing goods, and accounting data relating to them, are made in order to establish proof of infringement. Seizure of infringing copies of works can be made as a result of the search.
8.5. CAN THE DEFENDANT PUT THE VALIDITY OF A COPYRIGHT AT ISSUE IN PRELIMINARY INJUNCTION PROCEEDINGS?
The Copyright Law and procedural laws do not allow a defendant to challenge the validity of copyright in preliminary infringement proceedings of an administrative kind. However, defendants generally wait until the plaintiff actually brings an infringement action in order to counterclaim the validity of the copyright. The Copyright and Industrial Property Laws follow TRIPS standards in connection with preliminary measures proceedings and how they are independent from regular infringement proceedings.
8.6. WHAT IS THE FORMAT OF PRELIMINARY INJUNCTION PROCEEDINGS?
The plaintiff files a petition for preliminary measures in writing, showing a prima facie copyright infringement. Evidence is submitted for this purpose, together with a bond as a warrant of damages. IMPI admits the petition and assesses the infringement (although in practice, they do not analyse infringement at all and just approve the petition blindly). A few days later, IMPI responds to the plaintiff generally granting the petition and providing a date for it as well as a date for performing a search of premises and seizure, if requested by the plaintiff. IMPI may ask the plaintiff to elevate the amount of the bond if after the search and seizure is made, IMPI arrives at the conclusion that the original amount was too low to warrant possible damages if the case is decided in favour of the defendant. Once the preliminary measures are notified and implemented, the defendant has 20 business days to produce a response. At the same time, the plaintiff has 10 business days to file an infringement action, based on the merits of the matter. The defendant will be allowed to ask IMPI to eliminate the preliminary measures order by posting a counter-bond, which IMPI normally fixes as double the original bond.
8.7. IF A PRELIMINARY INJUNCTION IS GRANTED AND THE MAIN INFRINGEMENT ACTION IS FINALLY LOST, CAN THE DEFENDANT CLAIM DAMAGES FOR THE UNJUSTIFIED PRELIMINARY INJUNCTION? IF SO, HOW ARE THE DAMAGES CALCULATED? MUST THE PLAINTIFF PROVIDE SOME FORM OF BOND/GUARANTEE TO COMPENSATE THE DEFENDANT IN HE EVENT THAT THE PRELIMINARY INJUNCTION IS LATER HELD TO HAVE BEEN WRONGLY IMPOSED?
This question has been discussed extensively above.
8.8. TO WHAT EXTENT ARE DOCUMENTS, AFFIDAVITS, WITNESSES, SURVEY EVIDENCE, AND/OR (COURT-APPOINTED OR PRIVATE) EXPERTS USED IN PRELIMINARY INJUNCTION PROCEEDINGS?
In theory, all sorts of evidence is valid in preliminary injunction proceedings, subject to the limitations of administrative proceedings. However, most petitions are supported by documentary evidence only.
8.9. WHAT LEVEL OF PROOF IS REQUIRED FOR ESTABLISHING INFRINGEMENT OR INVALIDITY IN PRELIMINARY INJUNCTION PROCEEDINGS?
The level of proof required for establishing infringement in preliminary injunction proceedings is showing a prima facie case. The level of proof required for establishing invalidity in preliminary injunction proceedings is full proof.
8.10. HOW LONG DO PRELIMINARY INJUNCTION PROCEEDINGS TYPICALLY LAST?
Preliminary injunction proceedings take a few days of weeks from the date that they are filed to when they are implemented.
8.11. WHERE A PRELIMINARY INJUNCTION IS GRANTED, IS IT NECESSARY TO START MAIN PROCEEDINGS TO CONFIRM THE PRELIMINARY INJUNCTION?
It is necessary to start main proceedings to confirm a preliminary injunction within 10 business days after the latter has been notified to defendant.
9. APPEAL PROCEDURE
9.1. WHAT AVENUES OF APPEAL ARE AVAILABLE FOR A DEFEATED PARTY IN MAIN PROCEEDINGS OR PRELIMINARY INJUNCTION PROCEEDINGS? UNDER WHAT CONDITIONS?
Please see above.
9.2. IF AN APPEAL IS FILED, IS RELIEF USUALLY STAYED PENDING THE OUTCOME OF THE APPEAL?
If an appeal is filed relief stays pending its outcome.
9.3. HOW LONG DO APPEAL PROCEEDINGS TYPICALLY LAST?
Appeal proceedings last between six months and one year.
10. LITIGATION COSTS
10.1. WHAT LEVEL OF COST SHOULD ONE EXPECT TO INCUR TO TAKE A CASE THROUGH TO A FIRST INSTANCE DECISION, PRELIMINARY INJUNCTION PROCEEDINGS AND/OR APPEAL PROCEEDINGS?
10.2. CAN ATTORNEY FEES AND COSTS BE RECOVERED BY THE WINNING PARTY?
Attorney fees ad costs can indeed be recovered by the winning party, only in civil proceedings, and depending on how frivolously the losing party behaved in the opinion of the judge.
11. FORTHCOMING LEGISLATION
11.1. WHAT ARE THE IMPORTANT DEVELOPING AND EMERGING TRENDS IN YOUR COUNTRY’S COPYRIGHT LAW?
No developing and emerging trends are expected.
11.2. TO THE EXTENT IT RELATES TO COPYRIGHT ENFORCEMENT, PLEASE OUTLINE ANY MAYOR COPYRIGHT LEGISLATION IN THE PIPELINE.
12. USEFUL REFERENCES
12.1. PLEASE IDENTIFY ANY USEFUL WORKS OF REFERENCE RELATING TO COPYRIGHT LAW AND COPYRIGHT LITIGATION IN YOUR COUNTRY, INCLUDING USEFUL WEBSITES.
www.olivares.com.mx shows articles and books written by the partners and associates.
Source: European Lawyer Reference Series, Copyright Litigation 2010.