November 27, 2022

Volume XII, Number 331

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The Supreme Court of Mexico Recently Issued Criteria Regarding the Quantification of Damages Derived from Copyright Infringements.

In a decision issued by a majority of votes, the First Chamber of the Mexican Supreme Court analyzed the constitutionality of article 216 bis of the Federal Copyright Law, which sets forth that damages derived from violations to copyrights, in no case shall be set in an amount lower than 40% of the sales price of the original product, or of the original rendering of any service.

A company operating a nightclub alleged that said article is unconstitutional since it violates the principles of legal certainty and proportionality because its wording makes it impossible to establish which income should be applied to the percentage of compensation. This company alleged that, although there was a public performance of musical works in the establishment, beverage and food services were also offered, and the latter should not be considered as part of the quantification of damages. They added that the payment of supplies, administration expenses, and taxes were also not being considered and that, in any case, the compensation should only arise from any profits made by the nightclub.

The Supreme Court considered that article 216 bis is constitutional because said article provides two systems for calculating the indemnification of damages. These two systems are: i) the payment of at least 40% of the sales price of the original product or the original rendering of services, and ii) when said calculation cannot be conducted, the indemnification shall be fixed with the support of expert witnesses. Therefore, the compensation does not have the purpose of punishing, but rather compensating for the damage caused.

Likewise, it considered that the party that suffered the loss of profits from the exploitation of its work, could not suffer the losses or payment of liabilities generated by the functioning of the establishment, since estimating otherwise would be averse to the compensatory purpose of the questioned article.

Therefore, in the case of the rendering of services, the Supreme Court has resolved that compensation must be quantified including the total income related to the violation of copyrights. This includes the sale of beverages and food because they converge in the violation of copyrights since the public performance of musical works is carried out to obtain an additional incentive to the activity usually conducted by the establishment.

This decision caused the recent issuance of an isolated thesis by the First Chamber of the Supreme Court. Although this isolated and controversial criterion does not constitute compulsory case law, it certainly does constitute a criterion that may very be considered in future cases by Mexican courts, in order to complement and clarify some doubts still existing in connection with the quantification of damages derived from copyright violations.

© 2005-2022 OLIVARES Y COMPAÑIA S.C.National Law Review, Volume XII, Number 157
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About this Author

Partner

Dubbed by his peers as “one of the most knowledgeable IP lawyers in Mexico,” according to Chambers and Partners, Luis Schmidt’s focus is on achieving fair and just protection for his clients. He joined OLIVARES in 1991, became a partner in 1995, and has almost 40 years of  legal experience, with a specialization in the area of copyright in the business of entertainment and culture. He has represente the world’s leading companies in the music, film, television, book publishing, fine art, design, folklore and software.

Mr. Schmidt is head of the...

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Armando Arenas Intellectual Property and Litigation Attorney Olivares Law Firm Mexico City
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Armando Arenas joined OLIVARES in 2000 and became a partner in January 2017. He has experience working on a range of IP matters, including consulting and litigation on trademark, patent, unfair competition, trade dress protection, and misleading advertising cases before the Mexican Institute of Industrial Property (IMPI), Federal Court of Tax and Administrative Affairs (FCTA), Federal Circuit Courts (FCC) and the Supreme Court of Justice (SCJ) Regulatory Affairs and Public Acquisitions. Mr. Arenas is especially adept in patent litigation and protection under Mexico’s patent linkage system...

+52 (55) 5322 3000 Ext. 3906
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Alejandro Luna has been alternately dubbed “an extraordinary litigator, active at every level,” “responsive and insightful,” and “a knowledgeable IP practitioner offering creative and cost-effective advice” by his peers, according to IAM Patent 1000, while World Trademark Review’s WTR 1000 called him “a reliable ally for any party in a dispute”. Since joining OLIVARES in 1996 and being made partner in 2005, he has been instrumental to the firm’s IP Litigation, Regulatory, and Administrative Litigation practices. He co-chairs the Life Sciences & Pharmaceutical...

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Abraham Diaz Lawyer IT Privacy OLIVARES
Partner

Abraham Díaz “adds value for clients with diverse portfolios as a result of his tripartite copyright, trademark and unfair competition expertise,” according to World Trademark Review’s WTR 1000.

He co-chairs OLIVARES’ Privacy and IT Industry groups and has a wealth of knowledge across all areas of intellectual property (IP), with a focus on copyright, trademarks, unfair competition, litigation, licensing and prosecution matters. He also counsels clients on trade dress, product configuration, advertising, false...

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