Cablegate: Mexico Ipr: 301 Update; International Posture; Usg Programs

DE RUEHME #6229/01 3532055
P 192055Z DEC 07







Summary and Comment -------------------

1. (SBU) There has been some progress on a number of concerns included in the Mexico Special 301 Initiative demarche (e.g., increased enforcement activity, improved cooperation with local governments, no new patent linkage problems), but other concerns remain unaddressed (e.g., ex officio authority and data protection for pharmaceuticals). Mexican IPR officials have been keen to highlight their increasingly active role in the international arena, stressing their willingness to join the Anti-Counterfeiting Trade Agreement (ACTA) negotiations and their push-back against Brazilian efforts to undermine IPR in international health organizations. The U.S. Mission, together with Washington-based agencies, recently organized U.S. participation in a judicial event on trademarks and hosted a workshop in Monterrey aimed at encouraging greater federal-local cooperation in IPR protection in northern Mexico. Spring 2008 will be even busier, with a PTO training course on patent issues planned for January, a customs IPR training course scheduled for early February, a State-sponsored voluntary visitor program for Mexican legislators to visit Washington at the invitation of their U.S. congressional counterparts to discuss IPR in mid-February, an international judges forum on IPR issues being hosted by Mexico in late February, and DoJ assistance on computer forensics and writing an IPR handbook for prosecutors to take place sometime in the first half of the year. These exchanges are proving very useful in advancing U.S. interests in Mexico, particularly with regard to raising IPR consciousness among Mexican judges. End summary and comment. 301 Update ----------

2. (U) Enforcement: Mexican IPR prosecutors from the Office of the Attorney General of the Republic (PGR - rough equivalent of U.S. Department of Justice) have recorded increased arrests and seizures of pirates, counterfeiters, and infringing products this year, and have obtained four convictions as of December 18, 2007, versus two for all of 2006 (see for stats and other IPR info in Spanish). Mexican IPR prosecutors have registered 166 indictments so far this year (including the first ever against an on-line pirate) versus 158 in all 2006. Many of those indicted are in jail while awaiting a judge's final ruling. While these numbers are headed in the right direction, they are still small compared to the rampant scale of commercial piracy and counterfeiting here. Lack of ex officio authority to go after infringers (see following para), conflicting interpretations who has legal standing to represent right-holders, and lack of IPR awareness on the part of many judges continue to hamper criminal enforcement. On the administrative enforcement side, the Mexican Institute of Industrial Property (IMPI - rough equivalent of USPTO) reports that it has conducted 3,642 inspection visits (including an aggressive campaign against cyber-cafes involved in Internet piracy), levied USD 2.8 million in fines, and confiscated another USD 1 million in infringing products through November of this year. We understand that these numbers are higher than last year's (we are still trying to get IMPI's 2006 enforcement statistics) and reflect IMPI's increased enforcement manpower (IMPI hired dozens of new personnel for its enforcement division this year), but administrative enforcement continues to suffer from relatively light fines available under current law, the seemingly endless process of legal appeals that malefactors can take advantage of to avoid penalties for years, and lack of IPR awareness on the part of many judges.

3. (SBU) Ex Officio: A legislative amendment to make MEXICO 00006229 002 OF 005 commercial IPR infringement an ex officio offense remains pending in the Chamber of Deputies after having been approved by the Senate earlier this year. The Chamber of Deputies Justice Commission has had its hands full the last several months with a major presidential initiative to overhaul Mexico's criminal justice system, which will be voted on when Congress re-convenes in February 2008 (REF D). PGR and the movie and music industries are strong supporters of the ex officio amendment, which would allow PGR to investigate and prosecute cases even without specific right-holder complaints, which are required under current law. It would also end the currently legal practice whereby a right-holder can settle with and pardon an infringer, regardless of where a PGR case stands in the penal process. Other industry groups and most IPR attorneys are either ambivalent or opposed to the amendment, citing corruption as a good reason to leave the steering wheel in the hands of the right-holders and/or their lawyers. Beyond concerns of official corruption, though not admitted out loud, there is reason to believe that IPR lawyers would lose a bit of business in filing complaints were the amendment to pass. Passage of ex officio will not be a panacea for Mexico's IPR enforcement woes, but Post continues to believe that without more latitude to enforce Mexican IPR laws, we cannot expect PGR to significantly ramp up deterrence. In the meantime, PGR and Customs are reaching out on a more systematic basis to right-holders to seek industry complaints when they encounter infringing goods or suspicious shipments and to discourage pardons for defendants whose cases PGR is already in the process of prosecuting.

4. (SBU) State/local cooperation: Mexico has earned strong marks in this area. This past year has seen the State of Mexico and the Municipality of Toluca sign anti-piracy agreements under which they have pledged to work with the federal government and right-holders in combating commercial infringement and re-capturing local markets for legal commerce. In recent months both governments have been actively engaged in IPR protection activities, winning praise from a number of industry representatives. The industry coalition that has been promoting these state and municipal-level agreements is hoping to get several more states to jump on-board in 2008. Mexico City has not signed such an agreement, but has also engaged in unprecedented cooperation this year with federal officials and right-holders in trying to rein in the city's sprawling informal economy. The State of Jalisco, together with the Business Software Alliance (BSA) and IMPI, launched a campaign this year called ""Cleaning House"" under which it has agreed to have an outside auditor check the computer programs being used in state government offices and to work with BSA and its member companies to bring all state government software users into compliance.

5. (SBU) WIPO Implementation: The new head of the National Copyright Institute (INDAUTOR), Manuel Guerra, told Post that his agency would analyze current Mexican law to determine whether there are still gaps in implementation of the WIPO Internet Treaties. Guerra would not offer a timeline for the completion of this analysis - it certainly will not be completed in 2007 - but said INDAUTOR would push for legislative fixes if and when gaps were identified. 6. (U) Data protection: Despite pressure from the Embassy, the European Union, the international R and D pharmaceutical industry, and the Ministry of Economy (under which IMPI falls), the Health Ministry did not include data protection rules in recent changes to its health inputs regulations, due in large part to pressure from domestic generic producers. The Health Ministry response has been that, since Mexico considers international treaties to have the force of law, the relevant NAFTA provisions (1711.5 and 1711.6) are self-executing in Mexico and thus data protection does not need to be incorporated into new regulations unless the R and D industry can demonstrate cases in which its data was used MEXICO 00006229 003 OF 005 by third parties to obtain marketing approval. On December 14, the Health Ministry convened representatives of the R and D industry, the national generic makers, the Ministry of Economy, and IMPI to discuss the pros and cons of regulations on data protection. At the meeting, the representative of the R and D industry lobbied for a clearer data protection regime, but failed to identify specific violations of data protection. Embassy awaits further clarification from the R and D industry on whether there have been concrete cases of NAFTA non-compliance.

7. (U) Patent link: The pharmaceutical R and D industry reports that there have been no repeat occurrences of the patent link failures that took place in 2006, giving Mexico a good grade on this issue.

International Profile ---------------------

8. (SBU) Mexico has been actively engaged in the work of the IPR Working Group under the Security and Prosperity Partnership this year, hosting the WG's trilateral meeting in Cancun earlier this year. Mexico also agreed in 2007 to participate in negotiating an Anti-Counterfeiting Trade Agreement for enhanced IPR enforcement. IMPI officials have also stressed to Post that they have taken fire from both domestic critics and other developing countries for their opposition in recent months to Brazilian government initiatives to undermine patent rights in various international health fora, such as the Pan-American Health Organization.

9. (SBU) On the other hand, Mexico stayed on the sidelines in the imbroglio involving the tarnished Director General of the World Intellectual Property Organization Kamil Idris. Post has heard rumors that Mexico was not averse to seeing Idris resign, but did not want to appear to be ""piling on"" because Jorge Amigo, IMPI's longstanding Director General, might want to throw his hat into the ring as a possible successor. Consequently, Mexico did not want to anger African nations who took exception with the way Idris' indiscretions were handled.

Recent IPR Capacity Building Programs -------------------------------------

10. (U) Trademark Roundtable for Judges: The Mexican judiciary and IMPI, together with the Embassy and the Mexican bar association, organized a November 8-9 roundtable in Mexico City on the likelihood of confusion in trademark law. Embassy worked with USPTO to provide three U.S. speakers for the program: U.S. District Court judge Ronald Lew; USPTO Trademark Trial and Appeal Board administrative judge David Mermelstein; and attorney-adviser Jackie Morales from USPTO's Office of Enforcement. Over the course of five panel discussions, consensus emerged on the following critiques of the Mexican system: 1) the criteria Mexican judges use to evaluate likelihood of confusion vary significantly and are insufficiently developed; 2) it is administratively difficult for IMPI to cancel a registered mark that is similar to a pre-existing one; 3) repeated recourse to constitutional appeals (amparos) as currently allowed under the law can delay final resolution of administrative and civil trademark proceedings and imposition of penalties (which are too light in any case) for years, thus fostering impunity; and therefore 4) there is little incentive for parties to settle, as the alleged infringer has little to fear in either the short or medium term. Several of the Mexican speakers, including top IMPI officials and circuit court judges, noted that strong IPR protection is essential for competing in today's global economy and admitted that Mexico is falling short, inasmuch as Mexican trademark proceedings are lengthy, expensive, and highly uncertain. They called for legislative amendments to increase penalties and limit repeat appeals MEXICO 00006229 004 OF 005 (amparos de rebote). Judge Mermelstein explained that in the United States the criteria for examining the similarity of marks are detailed and consistent among USPTO examiners and administrative judges as well as federal appeals judges. Judge Lew commented on how he had used the criteria Judge Mermelstein had described to decide specific civil and criminal trademark cases, and emphasized the importance of making administrative and judicial rulings, as well as their underpinning logic, accessible to the public in order to provide greater transparency and predictability. All the Mexican participants (judges, IMPI officials, right-holders and lawyers) expressed great appreciation for the U.S. speakers and said that they drew very helpful contrasts between the two countries' IPR regimes.

11. (U) Workshop on Cooperation in Protecting IPR: The Embassy and Consulate General Monterrey organized a three-day event December 3-5 that brought together PGR, IMPI, tax officials, federal judges, economic and law enforcement officials from Mexico's key northern states and cities, USG experts from DoJ and ICE, and right-holders. The workshop aimed at fostering cooperation among federal IPR agencies, state and local governments, and affected industries. Right-holders and academics expounded on the economic and safety risks that result from widespread IPR violations. Mexican federal officials discussed their respective roles in enforcing IPR, and together with speakers from the BSA, the State of Mexico, and Mexico City, reported on their recent collaborative initiatives described in para 4 above. A week later one of the participants -- the Director of Economic and Financial Affairs for Ciudad Juarez -- announced that the city government would seek to sign a municipal-level anti-piracy agreement with right-holders and the federal IPR agencies in early 2008.

Upcoming IPR Capacity Building Programs ---------------------------------------

12. (U) USPTO Patent Course: In January 2008, USPTO will conduct a three-day capacity-building exercise with IMPI counterparts on patent-related issues.

13. (U) Customs Training Course: The Embassy will hold a customs training course at the Port of Manzanillo February 5-8, 2008. This course will be patterned on the one we did at the Port of Veracruz in July 2007. In addition to speakers from CBP, ICE, DOJ, and the World Customs Organization, we also plan to have PGR, IMPI, and Customs officials who attended the Veracruz training give presentations. We hope to arrange a live-time tracking exercise of suspicious inbound containers.

14. (U) Legislative Exchange Visit: The bicameral, bipartisan U.S. Congressional Anti-Piracy Caucus has invited eight Mexican legislators who head IPR-related committees in both the upper and lower chambers of the National Congress to visit Washington DC February 11-13 to meet with their U.S. legislator counterparts, USG experts, and right-holders to discuss the importance of strong copyright protection and pending legislative issues in the U.S. and Mexico.

15. (U) International Judicial IPR Forum: The Mexican Judiciary, IMPI, and INDAUTOR are organizing a forum February 26-29 to which they are inviting judges, IPR officials, right-holders and academics from North America (including the U.S.), Latin America, Europe, and WIPO. The focus will be on international comparative experiences in applying IPR law. We hope to have U.S. federal judges as well as USPTO and DOJ representatives participate.

16. (U) DOJ-PGR Activities: DOJ and PGR plan to hold two additional exercises in the first half of 2008. The first will be a technical training course on the use of computer/IT forensics in investigating cybercrimes, including Internet piracy. The second will be a workshop to draft an IPR manual MEXICO 00006229 005 OF 005 for all PGR prosecutors, especially those assigned to the state delegations (rough equivalents of U.S. district attorneys) with little or no background in IPR crimes.

Finally Talking with Judges ---------------------------

17. (SBU) As described in paras 10, 11, and 14, we have finally succeeded in re-engaging with Mexican judges on IPR matters. Those who participated in the Trademark Roundtable were all administrative judges, while the two judges who spoke at the Monterrey Workshop were penal judges, both of whom had participated in the December 2006 seminar on IPR enforcement organized by USPTO for Central American and Mexican judges in Miami. The nascent dialogue between the judiciary and other stakeholders is welcome and important, but to date has illustrated the many shortcomings of Mexico's IPR regime. Similar to the problems described in para 10 with regard to administrative trademark enforcement, the penal judges in Monterrey (one of whom had previously been a PGR prosecutor) outlined what they considered to be one of the major impediments to obtaining criminal convictions -- an overly cumbersome burden under the law to prove the plaintiff has legal standing to represent an actual right-holder. On this issue alone the two judges confessed to having thrown out large numbers of cases presented by PGR prosecutors. PGR prosecutors and private IPR attorneys in the audience protested that the criteria used by different penal judges on the issue of standing vary widely, to which the two judges responded that the system is simply designed that way. Since the conclusion of the workshop, Post has been consulting with PGR's IPR unit about setting up a judicial exchange event (perhaps modeled on the Trademark Roundtable format) between U.S. and Mexican IPR prosecutors and penal judges to more fully hash out varying legal interpretations of standing requirements. The February judicial IPR forum in Cancun (which is being organized by the same pro-IPR judges who put together the Trademark Roundtable) will be presided over by the President of Mexico's Supreme Court and might have Mexico's Secretary of Economy and Attorney General in attendance. This high-level event should send a strong signal to the entire Mexican judiciary of the importance of IPR. We hope it will also highlight major problems and generate political momentum to address them. Post will conitnue its efforts to engage both administrative and penal judges in dialogue with enforcement agencies and right-holders. Visit Mexico City's Classified Web Site at and the North American Partnership Blog at / BASSETT

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