Mexican copyright law - MCI can look, but not touch

The Mexican approach to enforcing copyright against counterfeiters has hitherto been characterised by minimal participation of the Mexican Copyright Institute (MCI). The institute’s participation is directly proportional to the slim resources granted to it.

For instance, procedural rules applicable to administrative proceedings of copyright infringement are embodied in the Mexican Industrial Property Law (instead of the Copyright Law) and consequently, those specific cases are prosecuted before the Mexican Institute of Industrial Property (IMPI), which is currently the only federal authority empowered to prosecute and decide copyright infringements in a first administrative instance.

In other words, before the amendments, the MCI was only given the right to recognise the existence of copyright on behalf of those who ask for a specific declaration and comply with all the legal requirements. Now, it seems, the MCI will play an active role when it comes to inspections related to copyright infringement, even as its ability to intervene in disputes seems to be diluted.

Therefore, in what primarily seemed to be an effort to increase the powers of the MCI and prevent copyright infringement, the Mexican Congress approved amendments to the Copyright Law that were published in the Official Gazette on June 10, 2013.

However, after reviewing the Official Gazette and the relevant changes, we cannot avoid asking if the MCI will gain autonomy with the relevant amendment, and if these changes to the Copyright Law will make it a better and stronger tool for authors or copyright owners to enforce their rights in México.

"It raises the question of whether citizens will request inspections before the MCI, given that it can conduct the inspection but has no authority to issue a proper resolution?"

Table 1 (see below) clarifies the scope and reach of the amendments.

As is evident, prior to the amendment, the MCI had the authority only to conduct investigations regarding alleged administrative infringements; it did not have the authority to order inspections to execute preliminary injunctive measures if the inspection revealed infringing activities.

Within the amended sections, Section 210 empowers the MCI to carry out inspections as well as to require information and reports within the context of an alleged copyright infringement, a right previously reserved only to the IMPI.It is worth mentioning that the resources of the MCI in connection with actions to enforce copyrights have not been the subject of any amendment since the issuance of the current Copyright Law of 1996, which emphasises the need for the current modifications.

Now, it will be empowered to conduct inspections; but its lack of ability to order an inspection shows that even after the amendments, the intervention of the MCI in the context of administrative infringements still depends on an official order from the IMPI.

Moreover, it should be noted that Section 234 of the Mexican Copyright Law was not modified. It sets forth that the competent authority to order and conduct inspections, demand information and reports, as well as carry out executive preliminary injunctive measures provided in the Mexican Industrial Property Law, is the IMPI. This means that after the amendment there are two federal authorities (MCI and IMPI) empowered to conduct inspections related to copyright infringements, but only one is entitled to order them.

In light of this, it seems that the MCI will intervene in these kinds of proceedings only upon request of the IMPI, and that the government fees the interested party should pay to proceed with the relevant inspection would be paid to the IMPI directly. It raises the question of whether citizens will request inspections before the MCI, given that it can conduct the inspection but has no authority to issue a proper resolution?

Or should citizens have to request the inspection before the IMPI, which is ultimately empowered to command the execution of examination visits, and even more, to impose injunctive measures, if during the inspection there is evidence of copyright infringement? If someone requests an inspection from the IMPI and pays the corresponding government fees, how does this benefit the MCI, if the IMPI is the only one who can collect those fees?

Under the above considerations, we are of the opinion that the amendment does not provide a better mechanism to enforce copyright in Mexico, nor does it bolster the autonomy of the MCI, which seems to depend more than ever on decisions made by the IMPI when it comes to copyright infringement.

In practice, we expect that the MCI will not allow the use of this new provision as a means of abuse against third parties that fall into the exceptions of fair use provided by the Copyright Law. This problem has been systemic when it comes to certain proceedings prosecuted with the MCI. We hope that the practice helps elucidate the purpose of the amendment, and results in a benefit for citizens. n

Begoña Cancino is the head of the IP practice and administrative litigation at Creel, García-Cuellar, Aiza y Enriquez. She can be contacted at:  begona.cancino@creel.mx