On October 5, 2022, the First Chamber of the Supreme Court of Mexico (SCJN) dismissed the motions for review filed by the Mexican actors, Diego Luna and Gael García Bernal, against the decision issued by the Fourth Collegiate Court in Civil Matters of the First Circuit, in the case of unauthorized use of their personal images. The SCJN dismissed the motions review because they did not dispute a question of constitutionality and with this result the decision issued by the Collegiate Court has become final.
What does the judgment of the Collegiate Court say?
The Mexican actors sued for the unauthorized use of their personal image in an advertising campaign in 2011. They initiated a procedure before the Mexican Institute of Industrial Property where it was determined to impose a fine for infringement on the user of Gael García’s image without authorization. Likewise, they initiated a civil procedure and pursued within it damages for 40% of the total sale to the public of the products marketed with the infringing advertising campaign. Compensation for damages equal to 40% of the sale to the public of infringing products or services is provided for in the Federal Copyright Law (LFDA), for cases involving a violation of the rights protected by said law, including the right to one’s personal image. However, the same law provides that when it is not possible to determine the compensation in this manner, experts will be used to set the amount.
In the case of Diego Luna and Gael García Bernal, the Fourth Collegiate Court in Civil Matters of the First Circuit recognized that the plaintiffs were entitled to compensation, however, it decided not to apply the 40% rule provided for in the LFDA and, instead, it ordered specialized experts to set the amount of the award.
What effects does the resolution of the SCJN have?
In the specific case, when the SCJN dismissed the appeals for review, the judgment issued by the Collegiate Court has become final and, therefore, the 40% rule for compensation for damages will not apply and the specialized experts will be who determine the amount of compensation. The foregoing supports the position that the 40% compensation will only be applicable in specific cases in which it is possible to link the infringement with the sale of a product or service that breaches the LFDA as required by article 216 bis of the LFDA and, in all other cases, the amount will be set through experts.
In general terms, what was resolved by the SCJN sets a precedent and implies that it will be the lower courts that determine whether to apply the 40% rule provided by the LFDA or whether or if experts will set the amount of compensation, depending on the criterion of each court with respect to the requirements set forth in article 216 bis of the LFDA for the 40% compensation to proceed, which will undoubtedly lead to a contention of criteria in the future.
Due to the foregoing, it is necessary to analyze in a timely manner and in each specific case the assumptions for the origin of compensation for damages related to the use of an individual’s image or other rights protected by the LFDA, as well as to evaluate if the 40% rule may be applicable or if, instead, experts will have to be used for the calculation.
The copyright and entertainment law department of our firm is at your service for any questions or comments on this subject and to help you obtain the best protection for your works.
A T E N T A M E N T E,
Juan Carlos Hernández
Luis Alberto Gonsen