Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA304900
`ESTTA Tracking number:
`09/08/2009
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92048476
`Defendant
`Promociones Antonio Pena, S.A. de C.V.
`John M. Murphy
`Arochi, Marroquin & Lindner
`5802 Bob Bullock (Loop 20), Building C1-56Yl
`Laredo, TX 78041
`UNITED STATES
`jmurphy@aml.com.mx
`Opposition/Response to Motion
`John M. Murphy
`jmurphy@aml.com.mx
`/John M. Murphy/
`09/08/2009
`Response to Motion to Amend.pdf ( 11 pages )(292129 bytes )
`exhibit a-b.pdf ( 46 pages )(2183520 bytes )
`exhibit c-f.pdf ( 26 pages )(882690 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`JUAN LONGORIA,
`
`Petitioner,
`
`V.
`
`PROMOCIONES ANTONIO
`PENA, S.A. DE C.V.,
`
`Registrant.
`
`\_r~._/v-._r~._/-._/-..t\-..4-..4--..a~...4
`
`Cancellation No. 92048476
`
`RESPONSE TO PET|T|ONER’S MOTION FOR
`LEAVE TO AMEND PETITION FOR CANCELLATION
`
`Petitioner has requested leave to amend the Petition for Cancellation. The
`
`motion should be denied, because the proposed pleading is legally insufficient, futile,
`
`and untimely.
`
`1. Factual and Legal Background
`
`a. The Fraud Claim
`
`Petitioner's proposed amended pleading alleges that:
`
`- MASCARA SAGRADA is the name and trademark of a Mexican wrestler
`
`not affiliated with respondent (Amended Petition, 11 10).
`
`-
`
`This wrestler has used the mark MASCARA SAGRADA in the United
`
`States and elsewhere since before respondent's date of first use
`
`(Amended Petition, 11 11 ).
`
`I Respondent “knew of the use of the mark MASCARA SAGRADA by this
`
`wrestler and his rights in the mark MASCARA SAGRADA before filing
`
`the application" (Amended Petition, 11 12).
`
`- Nonetheless, respondent declared under oath that he was entitled to
`
`use the mark MASCARA SAGRADA in commerce. This was fraud on
`
`the Patent and Trademark Office (Amended Petition, 1111 13-15).
`
`

`
`b. The Confidential Exhibit
`
`Petitioner has filed a “Confidential Exhibit” in support of its motion. The exhibit
`
`is confidential because it discloses the name of the wrestler referenced in the amended
`
`pleading. Traditionally, Mexican Iucha Iibne wrestlers perform under a stage name
`
`(such as MASCARA SAGRADA or MASCARITA SAGRADA), and wear a mask and
`
`costume in the ring. The real name of the wrestler is secret. For convenience, we will
`
`refer to the wrestler in question as "Juan Perez" (the Mexican equivalent of "John
`
`Doe”).
`
`The Confidential Exhibit consists of 83 pages of unexplained, undifferentiated
`
`documents in Spanish, including:
`
`I A decision of the Division of Reservations of Rights of the (Mexican) National
`
`Copyright Institute ("lNDAUTOR”) dated July 22, 2004,
`
`in Case No. 042002-
`
`OO3IN (documents L0156 to L0153). The parties to the case were Juan Perez
`
`and Antonio Hipolito Pefia Herrada (“Antonio Pefia"), the predecessor of the
`
`respondent in this case.
`
`- A supplemental order issued by INDAUTOR in the same case on August 9,
`
`2004 (documents L0145 to L0146).
`
`-
`
`Two copies of a "reservation of rights” certificate issued by INDAUTOR to Juan
`
`Perez on October 23, 2005 (documents L014? to L0154).
`
`- A license issued to Juan Perez by the Professional Wrestling Commission of
`
`the Federal District (Mexico City) (documents L0224 to L0230).
`
`c. “Reservations of Rights” Under Mexican Copyright Law
`
`Copyright protection in Mexico is governed by the Federal Copyright Law (Ley
`
`Federal de Derechos de Autor, or "LFDA"), and administered mainly by INDAUTOR
`
`(LFDA, Art. 2).‘
`
`1 Attached as Exhibit A are relevant portions of an English translation of the LFDA published by
`the International Bureau of WIPO.
`
`

`
`In addition to copyright registrations for literary and artistic works, ENDAUTOR
`
`issues “reservations of rights of exclusive use" in titles, names, designations, and the
`
`physical or psychological characteristics of real or fictional characters? Articles 173
`
`and 174 of the LFDA state:
`
`Art. 173. The reservation of rights is the right to the exclusive use and
`exploitation of titles, names, designations, distinctive physical and
`psychological
`characteristics
`or
`original
`or
`operational
`characteristics, as applied, according to their nature, to any of the
`following subject matter:
`(I) periodical publications: published in
`successive parts with varied contents and expected to continue
`indefinitely; (ll) periodical issues: distributed in successive parts with
`varied contents and capable of being transmitted; (Ill) typical real—lr'fe
`human, or fictional or symbolic characters; (I\/) persons or groups
`devoted to artistic activities;
`(V) promotional advertising: a novel,
`unprotected device whereby a product or service is promoted and
`offered with the additional incentive of the general public having the
`option of acquiring another product or service on better terms than
`those
`generally
`encountered
`on
`the market;
`commercial
`advertisements are excluded from the foregoing. [emphasis added]
`
`Art. 174. The Institute shall issue the relevant certificates and effect
`
`registration to protect the reserved rights referred to in the foregoing
`Article.
`
`A reservation of right of exclusive use under the LFDA is not a trademark
`
`registration. Trademark registrations are issued by the Mexican Institute of Industrial
`
`Property (lnstltuto Mexicano de la Propiedad industrial, or “lMP|”), under the Industrial
`
`Property Law (Ley de la Propiedad Industrial, or "LP|").3
`
`d. Juan Perez’s Reservation of Rights
`
`On September 23, 2005, INDAUTOR issued Reservation of Rights Certificate
`
`No. 04-2004—0907162773100-302 to Juan Perez. An English translation is attached as
`
`Exhibit C.‘ This document:
`
`-
`
`is E a trademark registration.
`
`- Does n_ot confer intellectual property rights in the United States.
`
`2 Stephen Zamora et al, Mexican Law (Oxford 2004), pp. 670-671 (Exhibit B).
`3 Id, pp. 652-654.
`4 The reservation issued after INDAUTOR cancelled a prior registration for the same character
`issued to Promociones Antonio Pefia, S.A. de C.V., the respondent in the present case. This
`decision has been the subject of various appeals, some of which are still pending.
`
`

`
`- Did not issue until September 23, 2005, over seven months in respondent
`
`applied to register the mark MASCARA SAGRADA in the United States.
`
`- Does ggt cover the name or mark MASCARA SAGRADA.
`
`Regarding the last point, the reservation relates to “the character whose visual
`
`representation and characteristics appear in the attachment to this document.” The
`
`attachment includes two photographs of Mr. Perez in his wrestling costume, and the
`
`following handwritten statement:
`
`PHYSICAL CHARACTERISTICS
`
`A white mask with a black vizard with white stripes in the middle and
`white eyebrows; at the perimeter a yellow stripe of the vizard. Green
`stripes in the lower part of the eyes, with a woven red netting in the
`eyes and an edge of costume gemstones in the eyes, and in the
`white portion of the vizard red stripes to each side of the white stripe,
`in the middle part a pair of (illegible) with yellow, green and black,
`with a belt with the same colors, white boots with the same collors as
`the wristband, white shorts, white leotard and outfit with yellow,
`green, black and red colors.
`
`PSYCHOLOGICAL CHARACTERISTICS
`
`Character characterized by being a professional "tecnico” (technical)
`wrestler in “lucha libre” (Mexican wrestling); prototype of hero that
`children admire and imitate as they practice wrestling as a sport and
`a discipline, which will give strength by practicing it.
`
`To emphasize, Mr. Perez did E identify the name or mark MASCARA
`
`SAGRADA as a physical or psychological characteristic of the character.
`
`Moreover, Antonio Pefia was the owner of Mexican Reg. No. 694527 for the
`
`mark MASCARA SAGRADA when he applied to register the same mark in the United
`
`States.5 The vatidity of this registration has never been challenged, by Juan Perez or
`
`anyone else.
`
`5 A copy and an English translation of this registration are part of the file for the registration at
`issue in this case. Mr. Pena died in 2006, and his heir, Marisela Pefia Herrada, assigned the
`U.S. and Mexican registrations for the mark MASCARA SAGRADA (and other intellectual
`property rights) to Promociones Antonio Pefia, S.A. de C.V. The attached extract from the
`database of the Mexican Institute of Industrial Property identifies Promociones Antonio Pefia as
`the current owner of the Mexican registration (Exhibit D).
`
`

`
`2. Discussion
`
`a.
`
`The Amended Pleading is Indefinite
`
`Fed.R.Civ.P. 9(b) states that "in alleging fraud or mistake, a party must state
`
`with particularity the circumstances constituting fraud or mistake.” This rule applies to
`
`fraud claims in cancellation proceedings. Media Oniine inc. v. El Ciasificado,
`
`inc.,
`
`Cancellation No. 92047294 ('|'i'AB September 29, 2008).
`
`As stated in King
`
`Automotive, inc. v. Speedy Muffler King, inc., 212 USPQ 801 (CCPA 1981), "Rule 9(b)
`
`requires that the pleadings contain [an] explicit rather than implied expression of the
`
`circumstances constituting fraud.”
`
`The Board has given specific guidance on the level of detail required when a
`
`plaintiff alleges fraud based on the defendant's alleged failure to disclose a prior right.
`
`in inteilimedia Sports inc. v.
`
`inteiiimedia Corp, 43 USPQ2d 1203 (TTAB 1203), the
`
`Board stated:
`
`the
`To withstand a motion to dismiss, a plaintiff claiming that
`declaration or oath in defendants
`application was executed
`fraudulently,
`in that
`there was another use of
`the same or a
`confusingly similar mark at the time the oath was signed, must allege
`particular facts which, if proven, would establish that: (1) there was in
`fact another use of the same or a confusingly similar mark at the time
`the oath was signed; (2) the other user had legal rights superior to
`applicant's rights; (3) applicant knew that the other user had rights in
`the mark superior to app|icant’s, and either believed that a likelihood
`of confusion would result from app|icant’s use of its mark or had no
`reasonable basis for believing othenrvise; and (4) applicant,
`in failing
`to disclose these facts to the Patent and Trademark Office, intended
`to procure a registration to which applicant was not entitled.
`
`The proposed amended pleading does not meet these requirements. Petitioner
`
`merely states that Antonio Pefia knew of the use of the mark MASCARA SAGRADA by
`
`a third party when he filed the applications Petitioner does not allege that Mr. Pefia
`
`believed Juan Perez to have superior rights in the mark. Moreover, petitioner does not
`
`allege particular facts showing that Mr. Pefia could not reasonably believed otherwise.
`
`5 This is a generous reading. The pleading refers not to the original applicant who signed the
`application (Antonio Pena), but to the current registrant (Promociones Antonio Pefia, S.A. de
`C.V.).
`
`

`
`This is not a trivial matter. As recently noted by the Federal Circuit, “Subjective
`
`intent to deceive, however difficult it may be to prove, is an indispensable element in
`
`the [fraud] analysis."
`
`in re Bose Corp, _ USPQ2d _, 2009 U.S. App. LEXIS
`
`19658 (Fed. Cir. 2009). The mere failure to disclose a potentially conflicting trademark
`
`right is not fraud. Metro Traffic Control v. Shadow Network,
`
`inc., 41 USPQ2d 1369
`
`(Fed. Cir. 1997); Woodstock’s Enterprises, inc. (Caiifomia) v. Woodsi.‘ock’s Enterprises,
`
`inc. (Oregon), 43 USPQ2d 1440 (TTAB 1997).
`
`Since the proposed amended pleading does not meet the requirements of
`
`Fed.R.Civ. P. 9(b), the motion for leave to amend should be denied.
`
`b.
`
`The Amended Pleading is Futile
`
`Leave to amend should not be granted when the proposed amendment is futile
`
`or would serve no useful purpose.
`
`Leathenivood Scopes intemationai,
`
`inc.
`
`v.
`
`Leatherwood, 63 USPQ2d 1699 (TTAB 2002) (“we deny opposefs motion to amend
`
`the notice of opposition, because...a||owing the proposed amendment...would be
`
`futile”); Enterprise Rent-A-Car Co. V. Advantage Rent-A-Car,
`
`inc., 62 USPQ2d 1857
`
`(TTAB 2002), 330 F3d 1333 (Fed. Cir. 2003) ("the Board will deny a motion for leave to
`
`amend if the proferred p|eading...wou|d serve no useful purpose”); institut National des
`
`Appeliations d’On'gine v. Brown-Forman Corp, 47 USPQ2d 1875 (TTAB 1998) ("it
`
`would be futile to allow opposers to amend their notice of opposition...because
`
`opposers cannot prevail on that claim").
`
`Although the proposed pleading is vague, we can guess at petitioner's legal
`
`theory from the motion and exhibits. Petitioner contends that the declaration signed by
`
`Antonio Pefia was fraudulent because Juan Perez already owned the mark MASCARA
`
`SAGRADA. According to petitioner, Mr. Perez owned the mark because of "the
`
`decision of the Mexican lnstituto Nacional Del Derecho Del Autor Direccién De
`
`Reservas De Derechos dated July 22, 2004" (Petitoner’s Memorandum, p. 3).
`
`Petitioner is wrong. Trademark rights are territorial. Person's Co., Ltd. v.
`
`Christman, 14 USPQ2d 1477 (Fed. Cir. 1990) (“The concept of territoriality is basic to
`
`

`
`trademark law”). An administrative decision by a Mexican government agency cannot
`
`confer trademark rights in the United States. Moreover, the registration issued by
`
`INDAUTOR after its July 22, 2004 decision was a copyright registration, not a
`
`trademark registration.
`
`On its face,
`
`the registration covers the physical and
`
`psychological characteristics of the MASCARA SAGRADA character, and not the name
`
`or mark MASCARA SAGRADA. Finally, the registration did not issue until September
`
`23, 2005, seven months after Mr. Pefia signed the declaration.
`
`Mr. Pefia died in 2006 and can no longer tell us what he was thinking when he
`
`signed the application. But the burden of proof is on petitioner, and there is no
`
`circumstantial evidence that Mr. Pefia's motives were fraudulent. At the very least, Mr.
`
`Pefia had a reasonable basis for believing that he was entitled to register the mark
`
`MASCARA SAGRADA in the United States. That is all the law requires. Metro Traffic
`
`Control v. Shadow Network, lnc., 41 USPQ2d 1369 (Fed. Cir. 1997) ("Mr. Schwartz’s
`
`statements, though false, were not uttered with the intent to mislead the PTO...the
`
`complex factual situation in this case apparently left Mr. Schwartz with an unclear
`
`understanding”); Maids to Order of Ohio, inc. v. Maid-to-Order, lnc., 78 USPQ2d 1899
`
`(TTAB 2006) (“If she had a reasonable or legitimate basis for the representations, then
`
`MTO has not committed fraud"); Wooo'stock’s Enterprises,
`
`inc.
`
`(California)
`
`v.
`
`Woodstock’s Enterprises, inc. (Oregon), 43 USPQ2d 1440 ('l‘|'AB 1997) ("we find that
`
`Carol Woodstock, when she signed the application oath, had a good faith, honest belief
`
`that respondent, as the senior user, owned the mark”).
`
`Since petitioner’s fraud claim is futile and would serve no useful purpose, the
`
`motion for leave to amend should be denied.
`
`c.
`
`The Amended Pleading is Untimely
`
`A motion for leave to amend a pleading should be denied if the moving party
`
`fails to act promptly after learning of the facts giving rise to the amendment. As the
`
`Board stated in Trek Bicycle Corp. v. SlyleTrek Ltd, 64 USPQ2d 1540 (TTAB 2002):
`
`

`
`A motion for leave to amend should be filed as soon as any ground
`for such amendment becomes apparent. Any party who delays filing
`a motion for leave to amend its pleading and,
`in delaying, causes
`prejudice to its adversary, is acting contrary to the spirit of Rule ‘l5(a)
`and risks denial of that motion.
`
`Accord: International Finance Corp. v. Bravo Corp., 64 USPQ2d 1597 (TFAB 2002).
`
`Petitioner knew the facts that gave rise to the proposed amendment at least as
`
`early as June 4, 2008, when it served responses to respondents first set of
`
`interrogatories (Exhibit E).
`
`In response to Interrogatory No. 1, petitioner stated, “the
`
`name and mark MASCARA SAGRADA is used in the United States and its territories
`
`by a well known Mexican wrestler who is unaffiliated with Registrant.” This "well known
`
`Mexican wrest|er" is identified by name in response to lnterrogatory Nos. 4.7 The same
`
`response notes that the name MASCARITA SAGRADA was created in 1989, and is a
`
`diminutive of MASCARA SAGRADA. The world of Mexican wrestling is fairly small,
`
`and over the past 20 years MASCARA SAGRADA and MASCARITA SAGRADA have
`
`often appeared at the same events.8
`
`Petitioner claims that additional facts “have only recently come to light" through
`
`“further independent research and investigation regarding matters for which information
`
`was not disclosed in Respondent’s [discovery responses]” (Petitioner's Memorandum,
`
`p. 2).” “Recent” is not defined. The only new facts identified in the motion and the
`
`exhibits are the INDAUTOR decision and the reservation of rights by Juan Perez.
`
`Respondent did not disclose this information because it was irrelevant.
`
`In any case,
`
`the information was readily available to petitioner, who knew Mr. Perez. Moreover, the
`
`registration and the INDAUTOR resolution are public records that petitioner could have
`
`obtained at any time.9
`
`7 The real name of the wrestler has been deleted from the exhibit because petitioner considers
`this information confidential.
`
`5 See programs dated May 17, 1991, May 22, 1992 and May 28, 1993, attached as Exhibit F.
`9 Article 164 of the LFDA states that INDAUTOR is required “to supply, to persons who so
`request, information on registrations...” Article 180 states, "The Institute shall supply...to any
`person proving a legal interest, plain or certified copies of the resolutions handed down in any
`business concerning the grant of reserved rights.”
`
`

`
`Finally, petitioner states that “acceptance of the First Amended Petition for
`
`Cancellation does not prejudice Respondent,” because "All evidence relevant to the
`
`claim of fraud that may benefit Respondent is already in the Respondent’s possession
`
`and control" (Petitioner's Memorandum, p. 4). Even if this is true, “To grant petitioners
`
`very untimely motion to amend would prejudice respondent by needlessly prolonging
`
`this proceeding...” Capital Speakers Inc. v. Capital Speakers Club of Washington D. C.
`
`(no, 41 USPQ2d 1030 ('|'|'AB 1996).
`
`It would also complicate the case and add to the
`
`burden and expense of this litigation for respondent.” As the Board stated in Media
`
`Online Inc. v. El Ciasificado, Inc., Cancellation No. 92047294 ('|'|'AB September 29,
`
`2008),
`
`“allowing piecemeal prosecution of
`
`this case would unfairly prejudice
`
`respondent by increasing the time, effort, and money that respondent would be
`
`required to expend to defend against petitioner's challenge to its registration."
`
`In summary, petitioner offers no credible explanation for its delay in seeking to
`
`amend its pleading.
`
`This delay, and the added expense and effort
`
`involved in
`
`defending a new claim, will prejudice respondent. Therefore, the motion for leave to
`
`amend should be denied.
`
`d.
`
`Proceedings Should Not Be Suspended
`
`Petitioner requests that proceedings be suspended while this motion is pending
`
`(Petitioner's Memorandum, p. 2). However, a motion for leave to amend a pleading is
`
`not a potentially dispositive motion thatjustifies suspension under 37 C.F.R. § 2.127(d).
`
`SDTInc. v. Patterson Dental Co., 30 USPQ2d 1707 ('|'|'AB 1994) (“Whether opposer’s
`
`motion is granted or denied, the case will not be disposed of. Therefore, the motion is
`
`not potentially dispositive”).
`
`Further, suspension will unfairly prejudice respondent. Petitioner alleges that
`
`respondent has not used the mark the mark MASCARA SAGRADA, and abandoned its
`
`1° For example, petitioner will presumably take the testimony deposition of Juan Perez, and
`counsel for respondent will need to attend that deposition.
`
`

`
`rights. Under Section 45 of the Trademark Act, nonuse for three consecutive years is
`
`prima facie evidence of abandonment.
`
`Respondent's registration for
`
`the mark MASCARA SAGRADA (Reg. No.
`
`3232114) issued on April 24, 2007. The third anniversary of the registration date is
`
`April 24, 2010. Under the current trial order, petitioner's 15 day period for rebuttal
`
`testimony ends on March 6, 2010 — before the third anniversary of the registration date.
`
`If proceedings are suspended for more than a few weeks, testimony will continue until
`
`E the third anniversary of the registration date. Effectively, this will shift the burden
`
`of proof on the abandonment claim from petitioner to respondent. Respondent will be
`
`required to provide affirmative evidence of its use of or intent not to abandon the mark
`
`MASCARA SAGRADA.
`
`3. Conclusion
`
`Although petitioner claims to have recently discovered a new basis for canceling
`
`respondent’s registration,
`
`its proposed pleading lacks the specificity required by
`
`Fed.R.Civ.P. 9(b). Moreover, the legal reasoning behind petitioner's fraud claim is
`
`flawed, and the facts on which the claim is based have long been known or available to
`
`petitioner. Respondent will be unfairly prejudiced if the amendment is allowed, or if
`
`proceedings are suspended while the motion is considered. Therefore, respondent
`
`requests that proceedings not be suspended, and that the motion be denied.
`
` Building C1—56Yl
`
`
`Laredo, Texas 78041
`
`Tel: 011.52.55.5095.2031
`
`E—mail: imurghy@am|.com.mx
`
`Attorney for Respondent
`Member of the Illinois Bar
`
`10
`
`

`
`CERTIFICATE OF SERVICE
`
`I, John M. Murphy, certify that this RESPONSE TO PETITiONER'S MOTEON
`
`FOR LEAVE TO AMEND PETITION FOR CANCELLATION was served on Jeffrey H.
`
`Brown of Michael, Best & Friedrich LLP,
`
`by electronic mail addressed to
`
`ihbrown@michae|best.com and chii docket michaeibestcom, on September 8, 2009.
`
`
`
`11
`
`

`
`EXHIBIT A
`
`

`
` Copyright
`
`Federal Law on Copyright*
`
`TABLE or CONTENTS"
`
`MEXICO
`
`Article
`
`Title I: General provisions
`
`Sole Chapter....................................................................................................... .. Jim
`
`Title II: Copyright
`
`Chapter I: General Provisions ............................................................................
`
`l 1—l 7
`
`Chapter II: Moral Rights .................................................................................. ..
`
`'1 8»~—23
`
`Chapter III: Economic Rights .......................................................................... .. 24——29
`
`Title III: Transfer of Economic Rights
`
`Chapter I: General Provisions .......................................................................... .. 30—4l
`
`Chapter II: Contract for the Publication of a Literary Work ........................... .. 42—-—57
`
`Chapter III: Contract for the Publication of Musical Works ............................. 58——60
`
`Chapter IV: Stage Performance Contract ........................................................ .. 61-65
`
`Chapter V: Broadcasting Contract ................................................................... .. 66—67
`
`Chapter VI: Audiovisual Production Contract ................................................ .. 68-72
`
`Chapter VII: Advertising Contracts ................................................................. .. _7'i—_76_
`
`Title TV: Copyright Protection
`
`Chapter I: General Provisions .......................................................................... .. 7’/'—84
`
`Chapter II: Photographic, Three-Dimensional and Graphic Works ................ .. 85——93
`
`Chapter III: Cinematographic and Audiovisual Works ................................. .. 94-100
`
`Chapter IV: Computer Programs and Databases ......................................... .. 10 l—l 14
`
`Title V: Neighboring Rights
`
`vi Spanish title: Ley Federal del Derecho de Autor.
`Entry intoforce: 24 March, 1997.
`Source: Diario Oficial of 24 December, 1996, pp. 39 ~— 66.
`1:Yote.' Translation by the International Bureau of WIPO.
`Added by the International Bureau of WIPO.
`
`
`MX
`
`Copyright, Law, 05/12/1996
`
`Page 1 /40
`
`

`
`Copyright
`
`Chapter I: General Provisions .................................................................................. m
`
`Chapter II: Performers ................................................................................... 116--122
`
`Chapter III: Book Publishers ......................................................................... l23—l 28
`
`Chapter IV: Producers of Phonograms .......................................................... l29~134
`
`Chapter V: Producers of Videograms .......................................................... .. 13 5-~138
`
`Chapter VI: Broadcasting Organizations ..................................................... .. I39--146
`
`Title VI: Limitations on Copyright and Neighboring Rights
`
`Chapter 1: Limitation in the Public Interest ........................................................... .. 147
`
`Chapter II: Limitations on Economic Rights ............................................... .. l48—l 51
`
`Chapter III: Public Domain ......................................................................... ..
`
`I 52-153
`
`Title VH2 Copyright in National Symbols and Expressions of Popular Culture
`
`Chapter I: General Provisions.................................................................................. E31
`
`Chapter H: National Symbols ........................................................................ l5S——l 56
`
`Chapter III: Popular Culture ........................................................................ .. 157--—1 61
`
`Title VIII: Registration of Rights
`
`Chapter I: Public Copyright Register .......................................................... .. l62—l 72
`
`Chapter II: Reservation of Rights of Exclusive Use .................................... .. 173--191
`
`Title IX: Collective Administration of Rights
`
`Sole Chapter: Collecting Societies f. ............................................................ .. l92—207
`
`Title X: National Copyright Institute
`
`Sole Chapter................................................................................................... 208—2l2
`
`Title XI: Procedure
`
`Chapter I: Procedure Before the Judicial Authorities .................................... 21 3—2l6
`
`Chapter II: Conciliation Procedure ................................................................ 21'/'—2l8
`
`Chapter III: Arbitration ................................................................................ .. 2 1 9—228
`
`Title XII: Administrative Proceedings
`
`Chapter 1: Copyright Infringement .............................................................. .. 229-«-230
` ,__
`
`MX
`
`Copyright, Law, 05112.’1996
`
`Page 21’ 40
`
`

`
`Copyright
`
`MEXICO
`
`Chapter H: Trade-Related Infringements ..................................................... .. 23 l—236
`
`Chapter III: Administrative Appeal ............................................................. .. 23 7—23 8
`
`Transitional Provisions
`
`Title I General provisions
`
`Sole Chapter
`
`is the
`Art. 1. The purpose of this Law, which regulates Article 28 of the Constitution,
`safeguarding and promotion of the cultural heritage of the Nation, and the protection of the rights of
`authors and performers and also those of publishers, producers and broadcasting organizations in
`relation to their literary or artistic works in all their forms, their performances, their publications,
`their phonograms or videograms or their broadcasts, and also other intellectual property rights.
`Art. 2. The provisions of this Law are a matter of public policy and in the interest of society,
`and they are to be generally observed throughout the territory. Their administrative implementation
`is the responsibility of the Federal Executive, acting through the National Copyright Institute and,
`in the cases provided for in this Law, through the Mexican Institute of Industrial Property.
`
`For the purposes of this Law, “Institute” means the National Copyright Institute.
`
`Art. 3. The works protected by this Law are originally-created works susceptible of disclosure
`or reproduction in any form or medium.
`
`Art. 4. The works qualifying for protection may be:
`
`(A)
`
`in terms of their authorship:
`
`(I)
`
`(II)
`
`known works: containing a mention of the author’s name or of a sign or signature
`by which he is identified;
`
`anonymous works: without any mention of the author’s name or of a sign or
`signature identifying him, either at the said author’s wish or because such
`identification is not possible;
`
`(III) pseudonymous works: disclosed under a name, sign or signature that does not
`reveal the author’s identity;
`
`(B)
`
`in terms of their communication:
`
`(1)
`
`disclosed works: those that have been brought to the notice of the public for the
`first time in any form or medium, either entirely or in part, in their essentials or by
`means of a description thereof.
`
`(11)
`
`unpublished works: those that have not been disclosed;
`
`(III) published works:
`
`(a)
`
`those that have been issued, regardless of the method of reproduction of the
`copies, provided that the number of the said copies made available to the public
`reasonably meets the exploitation requirements of the said work, estimated
`according to the nature thereof;
`
`
`
`MX
`
`Copyright, Law, 05112/1996
`
`Page 3 I 40
`
`

`
`
`
`C
`‘h
`°‘””"g'
`
`MEXICO
`
`Art. 153. The use of the work of an anonymous author shall be free provided that the said
`author does not reveal his identity or that there is no recognized owner of economic rights.
`
`Title VII Copyright in National Symbols and Expressions of Popular
`Culture
`
`Chapter I General Provisions
`
`Art. 154. The works to which this Title refers are protected independently of whether or not
`the individual authorship thereof may be determined or whether or not the tenn of protection
`accorded to the authors has expired.
`
`Chapter II National Symbols
`
`Art. 155. The Mexican State is the owner oftlie moral rights in national symbols.
`Art. 156. The use of national symbols shall conform to the provisions of the Law on the
`National Coat of Arms, Flag and Anthem.
`
`Chapter III Popular Culture
`
`Art. 157'. This Law protects literary and artistic works, works of popular art of craft works,
`and also all original manifestations ir1 local languages, and the practices, customs and traditions of
`the multi-cultural society constituting the Mexican State that do not have an identifiable author.
`Art. 158. Literary or artistic works, works of popular art or craft works that have evolved and
`are perpetuated in a community or ethnic group with its origins or roots in the Mexican Republic
`shall be protected by this Law against distortion intended to discredit the said works or prejudice
`the reputation or image of the community or ethnic group to which they belong.
`Art. 159. The use of the literary or artistic works, works of popular art or craft works
`protected by this Chapter shall be free, provided that the provisions thereofare not contravened.
`Art. 160. In any fixation, representation, publication, communication or use in any way of a
`literary or artistic work, work of popular art or craft work protected under this Chapter, the
`community or ethnic group or, where appropriate, the region ofthe Mexican Republic to which it is
`specific shall be mentioned.
`Art. 161. The Institute shall be responsible for ensuring compliance with the provisions of this
`Chapter and assisting in the protection of the works covered by it.
`
`Title VIII Registration of Rights
`
`Chapter I Public Copyright Register
`
`Art. 162. The purpose of the Public Copyright Register is to ensure the legal security of
`authors, owners of neighboring rights, the holders of the economic rights concerned and their
`successors in title, and also to afford sufficient publicity to works, instruments and documents
`through registration.
`Literary and artistic works and neighboring rights shall be protected even if they are not
`registered.
`
`MX
`Copyright, Law, 05/12/1996
`Page 24 I 40
`
`

`
`Copyright
`
`MEXICO
`
`Art. 163. The following may be entered in the Public Copyright Register:
`
`(1)
`(11)
`
`(III)
`
`literary or artistic works submitted by the authors thereof;
`digests, arrangements, translations, adaptations or other versions of literary or artistic
`works, even when there is no proof of permission to disclose the work concerned given
`by the owner of the economic rights; such registration does not afford entitlement to
`publish or use the registered work in any way unless the appropriate authorization is
`proved; that fact shall be recorded both in the regis1:ration and in any certificates that are
`issued;
`instruments and statements pertaining to the various collecting societies,
`those that revise or amend them;
`
`including
`
`(IV) agreements or treaties entered into by Mexican collecting societies with foreign
`counterparts;
`instruments, agreements or contracts that in any way confer, alter, transfer, encumber or
`cancel economic rights;
`
`(V)
`
`(VI) agreements or contracts relating to neighboring rights;
`(VII) powers of attorney granted for dealings with th