California Western School of Law

Yeager, Daniel B.

English

Insurance Law: Public Policy Permits Insuring Against One\u27s Own Intentional Acts of Discrimination

Wesley-Smith, Peter

Settlement of the Question of Hong Kong

Almond, Harry H.

The Nicaraguan Military Activities Case (Nicaragua v. United States of America)

Nafziger, James A.R.

PROTECTION OF CULTURAL PROPERTY
JAMES A.R. NAFZIGER*
Conferences such as this and writings in American law journals
have played important roles in shaping the youthful, though cer-
tainly not juvenile, field of cultural property law. I am going to talk
specifically about the international aspects of that law. John Mer-
ryman, in particular, has been a leader in this field, by virtue of his
own scholarship and his generous encouragement of others in con-
ferences such as this. I have been particularly impressed by John's
insistence in his writings on a contextual, case-by-case analysis of
cultural property claims. In addition, John and another influential
scholar, Paul Bator, have firmly established a framework for ana-
lyzing competing interests and values-the essence of contemporary
cultural property law. Accordingly, the job of international law is
to define those interests clearly in need of support and cooperation
by the international community and to reconcile those interests
with national laws.
Paul Bator emphasizes the universality of the common cultural
heritage by asking whether Keats of English literary fame could
have ever written the Ode on the Grecian Urn without the urn. At
this point, I am going to follow John Merryman's usual leadership
by offering my only cultural property law joke which relates to that
same poem. It is actually borrowed from the comedian Lily Tomlin,
who asked, "If beauty is truth, and truth beauty, why don't more
people have their hair done in the law library?" In any event, these
lines of Keats are not all you need to know about international cul-
tural property law. I propose briefly to summarize this law, to de-
scribe several recent developments and to suggest some ways to im-
prove the legal regime. In my judgment, it is a good regime; it has
developed quickly, but it is basically a good one that simply needs
greater support and encouragement. I hope I am not contributing
to the disaster to which Steven Brezzo referred by suggesting the
need for more legal enforcement! But then, one might say, that's
my job as a lawyer and law teacher.
Until 1970, the international law of cultural property was largely
* Professor of Law, Willamette University College of Law.
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limited to certain provisions for the protection of cultural property
in the time of war under the Hague Conventions of 1899, 1907 and
1954. Then, largely in response to growing cultural nationalism, to
a burgeoning antiquities market and to an unprecedented peace-
time hemorrhaging of entire cultural patrimonies, the current
framework for the protection of cultural property quickly devel-
oped. From the United States viewpoint, the hard law that has
emerged-just in the last fifteen years-consists principally of six
elements. The first and foremost is the UNESCO Convention on
the Means of Prohibiting and Preventing the Illicit Import, Export
and Transfer of the Ownership of Cultural Property, as imple-
mented by special legislation.1 Despite the United States Senate's
advice and consent in favor of the Convention very early in the
1970's, this country did not become a party to it until President
Reagan ratified it upon congressional approval of implementation
law that took many years of effort. The UNESCO Convention pro-
vides for a system of export certification, to which the United
States has not consented, for a commitment by parties to further
develop their written inventories of cultural property, for controls
on the importation of stolen material from established institutions
and for a very important provision-Article 9-which provides for
cooperation in responding to an emergency request by any other
party to the treaty which contends that its cultural property is in
jeopardy.
The second piece of legislation enacted in 1973 is the law regu-
lating the importation of pre-Colombian, monumental or architec-
tural sculpture or murals.' It prohibits the importation of large
monuments, stelae, murals and fragments of them from certain
Western Hemispheric countries without a permit from the country
of origin.
Third, there are several bilateral treaties of cooperation begin-
ning with Mexico in 1971 that provide for the recovery and return
of stolen archeological, historical and cultural properties.' These
treaties require each party State to prosecute individuals for steal-
ing cultural property from the territory of the other party State.
Fourth is the National Stolen Property Act,' which has been
1. 19 U.S.C. §§ 2601-2613 (1982).
2. 19 U.S.C. §§ 2091-2095 (1982).
3. See. e.g., Treaty of Cooperation Providing for the Recovery and Return of Stolen
Archaeological, Historical and Cultural Properties, United States-Mexico, Mar. 24, 1971, 22
U.S.T. 494, T.I.A.S. No. 7088, 791 U.N.T.S. 313.
4. 18 U.S.C. §§ 2311-2320 (1982 & Supp. !11 1985).
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PROTECTION OF CULTURAL PROPERTY
used for many purposes but in particular in the two rather spectac-
ular, and perhaps too often written about, cases of Hollinshead6
and McClain." In those cases, the National Stolen Property Act
was used to prosecute individuals for having taken property out of
Guatemala and Mexico, respectively, contrary to the laws of these
countries. The National Stolen Property Act was thereby applied
by defining theft according to the law of the country of origin.
Fifth, there are also the standard U.S. customs requirements for
proper declarations and evaluation. The final element is our extra-
dition law, which is available to extradite individuals, that is, to
require the return of individuals for prosecution under cultural
property law.
That is basically the framework, at least the hard law frame-
work, of internationally related cultural property law in this coun-
try. Certain other instruments may be of interest. These include the
1972 Convention on Protection of the World Cultural and Natural
Heritage and several regional instruments, including a Western
Hemispheric treaty, the Treaty of San Salvador, to which the
United States is not a party. The latter contains some rather ex-
treme provisions for honoring the cultural property laws of other
countries. Another regional instrument is a European convention
for governing the import and export of cultural property. There are
also provisions in the comprehensive Law of the Sea Treaty, to
which the United States is not a party, which address the owner-
ship, protection and recovery of shipwrecks on the continental shelf.
Besides this hard law, there is a body of soft law including reso-
lutions of the United Nations General Assembly, UNESCO resolu-
tions and some norms articulated by nongovernmental organiza-
tions such as ICOM, that is, the International Council of
Museums, all of which help to define and provide a kind of vocabu-
lary and institutional framework for restitution of property and for
avoiding more formal methods of dispute resolution under "harder"
law. I should also mention certain institutions, such as Interpol and
the International Foundation for Art Research in New York, which
track stolen property and otherwise provide some support and en-
forcement of international cultural property law. Turning to recent
developments, the legislation implementing the UNESCO Conven-
tion contains two major provisions, one to implement the UNESCO
5. United States v. Hollingshead, 495 F.2d 1154 (9th Cir. 1974).
6. United States v. McClain, 545 F.2d 988 (5th Cir. 1977), subsequent opinion at 593
F.2d 658 (5th Cir. 1979), cert. denied, 444 U.S. 918 (1979).
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Treaty by prohibiting importation of items stolen from institutions
abroad and another to implement the provision I described earlier
that permits other countries to request the United States to take
measures to respond to pillage when their cultural patrimony is
claimed to be in jeopardy. There has been but one such request so
far, by the government of Canada. The nature of the claim is a
little unclear because it is still confidential. It appears to be a
rather pervasive claim that native Canadian heritage is in jeopardy,
as evidenced by the illegal export of certain archeological objects,
principally to the United States. In talking to government officials
in Washington just this last week [November 1986], I learned that
the request has been referred back to the Canadian government for
further elaboration. Whatever might result, there has at least been
this one request, the response to which could be either a denial or,
if it is a positive response, a commitment by the United States to
recognize and enforce a list of items that may not be imported into
the United States without a special permit from Canada.
Another recent development of some real interest is the growing
concern in this country about the export of our cultural heritage.
We tend to think of ourselves as an art poor country; we have been
preoccupied, certainly we academics and lawyers, about the legal
constraints on the importation of cultural property into this coun-
try. There is, however, a fairly recent perception that the American
Indian heritage in the Southwest is being jeopardized by taking it
from public lands and exporting it to Germany, Japan and other
countries. The United States government is concerned. There is a
draft by the General Accounting Office which takes up this prob-
lem. It is not yet released for publication, but I think it is of some
particular interest because it shifts our focus a bit from the prob-
lem of importation into an "art poor" country to the realization
that we may be an art rich country and need to be concerned about
the pillage and wrongful exportation of our own cultural heritage.
I would mention also, as a recent development, what I think is a
growing intention by governments to educate others about their cul-
tural property laws. When I was in Korea recently, I found a little
brochure in my hotel room. It was inside a folder that contained the
usual material one gets about local attractions, hotel restaurants
and so forth. The brochure provided information on taking and not
taking antiquities and artifacts out of Korea along with addresses
and telephone numbers for further information. It is not just the
usual information about taking shampoo and towels out of the ho-
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PROTECTION OF CULTURAL PROPERTY
tel! I don't know how representative this is, but it is obviously an
expression of strong interest in educating visitors on national cul-
tural property law.
Another recent development is a somewhat greater inclination to-
wards inter-institutional cooperation, return, restitution, exchanges
and long-term loans of cultural property. This is occurring despite
the substantial problems to which Steven Brezzo specifically re-
ferred. All of these developments are positive.
On the negative side, I think there are some rear guard legisla-
tive efforts to undermine the positive law. Fortunately, these efforts
so far have failed, but they still pose a clear and present danger. I
will just mention two. One is a federal bill which, if enacted, would
have prevented prosecution, such as in the McClain case, where the
claim of ownership is based on a foreign governmental declaration
of ownership or its functional equivalent. Fortunately, that bill
failed. A second legislative effort is the proposed repose legislation
at state and federal levels, according to which the claims of foreign
governments alone would be restricted to very short statute of limi-
tations periods. 7 The effort seems to be in response to the fears of
many collectors and museums that their collections would be put in
imminent jeopardy if foreign governments are permitted to exercise
their cultural property laws to claim objects reposed in this country
for substantial periods of time. Extremely short periods of time are
established under the proposed legislation. Fortunately, the bill has
failed thus far in Congress. The bill is also badly drafted.
I might also add that in 1985, I was on a panel discussing the
proposed legislation with Ashton Hawkins, the general counsel and
vice-president of the Met in New York and a proponent of repose
legislation. I suggested to him, more or less, that if efforts were to
be made to reform laws, they should be made in Albany, not in
Washington, D.C. That is, if efforts were to be made to correct
problems raised by state statues of limitations, they should be done
at the state, not at the federal, level. The next thing I heard, a few
months later, was that, indeed, a bill was pending in Albany. It was
later passed by the New York legislature, at which point several of
us went into action writing letters to Governor Cuomo. We letter-
writers now take some credit for the governor's veto of the repose
provision in a larger bill last July [1986].
What are the proposed improvements in the law? I will just men-
7. See supra article by Professor Nafziger.
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tion that there are some real improvements which can be made to
further protect the interests of collectors and museums in the
sphere of private international law or conflict of laws dealing with
jurisdiction, choice of law and enforcement of foreign judgments.
You are not all lawyers and I don't want to put any of you to sleep,
whether or not you are lawyers, with technicalities; but I think that
this clearly is an area of law that makes it very difficult for muse-
ums and collectors to exercise their legitimate rights to claims. I
would also say we need some further refinement of the law of
restitution.
One might question the return to Greece of the Elgin Marbles in
the British Museum, as John Merryman has very eloquently done
in an article I recommend to you that was recently published in the
Michigan Law Review.8 One might also question Pakistan's claim
to the return of the diamond that is the centerpiece of the British
crown or, probably of some special interest to us lawyers, the claim
of Iraq to the return of the Code of Hammurabi in France. On the
other hand, we might legitimately question whether it is equitable
for most Peruvian textiles to repose abroad or for the British to
turn down the Nigerian request for returning just some, not all, of
the Benin Bronzes which, after all, had been captured during a pu-
nitive expedition by the British during the colonial era. One might
also ask whether the British Museum needs all of its 90,000 Afri-
can artifacts, many resulting, of course, from colonial coercion. On
the other hand, one might question whether the basement of Peru's
National Archeology and Anthropology Museum is the best place
for some two or three thousand mummy bundles or whether the
Egyptian Museum needs to hoard its artifacts in duplicate, many of
which are never seen nor readily available to scientists.
Clearly, we need some standards. What should they be? On the
one hand, I think it is ridiculous to argue that all objects should
remain in the countries of origin, let alone that they should be re-
stored or returned to those countries in all cases. A shortage of cul-
tural property is u~ually not the issue. Many countries are store-
houses of repetitive artifacts which are often on display and
disintegrating. We need to further define the concept of genuine
significance. That is, we need to determine which objects are im-
portant enough to require restitution and return. Certain schemes
that conservationists of archeology have developed for scarce re-
8. Merryman, Thinking About the Elgin Marbles, 83 MICH. L. REV. 1880 (1985).
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PROTECTION OF CULTURAL PROPERTY
sources can be recycled, I think, to further develop the standards
we need. For example, cultural objects might be classified under
four catagories with respect to claims of restitution and return:
First would be those objects whose long-term retention by the coun-
try of origin is imperative for reasons of cultural heritage; second
would be those whose retention for medium-range research needs
and viewing is important, but not essential; third would be those
whose short-term retention is necessary for documentation and tem-
porary display; and fourth would be those which are expendable. It
may seem like common sense; but it is the kind of approach, the
kind of standards, I think, that are really quite needed to further
refine the international law of restitution.
Further improvements will require money-of which it is always
said that there is all too little. There needs to be, of course, more
financial assistance, perhaps through some institution such as
ICOM or UNESCO, to assist economically poor, but often art rich,
countries. This may, however, be wishful thinking in our current
era. Some real efforts have been made along the lines that Steven
Brezzo and others have suggested to try to make it easier for muse-
ums and other institutions and collectors to engage in exchange and
long-term loans without the many threats, legal and otherwise, that
such projects and programs may pose.
In conclusion, to return to Keats, it may be that a thing of
beauty is a joy forever, its loveliness increases. But all too often in
our day and age, the truth of this statement, I think, may depend
on international cooperation and law.
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Protection of Cultural Property

Etcheverry, Martin A.

Recent Development of Industrial Property Rights in Argentina

Soni, Mariano

RECENT DEVELOPMENT OF INDUSTRIAL
PROPERTY RIGHTS IN MEXICO
MARIANO SONI*
INTRODUCTION
The focus of this paper will be on the recent developments in
Mexico in the area of Industrial Property rights. However, the or-
der of the outline indicated in the Program will be changed slightly
to discuss simultaneously the application of the Paris Convention
and recent decisions of our courts on this subject.
I. EXPERIENCES WITH THE PARIS CONVENTION FOR THE
PROTECTION OF INDUSTRIAL PROPERTY AND WITH BILATERAL
TREATIES
Mexico has been a member of the Paris Convention for the Pro-
tection of Industrial Property since its revision of Brussels of 1900
and up to the Stockholm Revision of 1967.1 Mexico is not a party
to any other bilateral treaty on this subject, but is a member of the
Agreement of Lisbon for the Protection of Appellations of Origins
and Their International Registration of October 31, 1958.2
On February 10, 1976, the new Mexican Law of Inventions and
Marks3 was enacted. Two sets of provisions of this law, Articles
127 and 128,' immediately concerned the owners of Industrial
Senior Partner, Bufete Soni, Mexico City, Mexico; law degree received from Na-
tional Autonomous University of Mexico in 1959; member of Inter-American Bar Associa-
tion, USTA and Intellectual Property Law Association; president Asociaci6n Mexicana de la
Propiedad Industrial 1980-1982; first vice-president Asociaci6n Mexicana para la Protecciion
de la Propiedad Industrial; President Inventions, Marks and Transfer of Technology Com-
mittee, the Barra Mexicana-Colegio de la Abogados.
I. UNITED INTERNATIONAL BUREAUX FOR THE PROTECTION OF INTELLECTUAL PROP-
ERTY, MANUAL OF INDUSTRIAL PROPERTY CONVENTIONS, Geneva, 1974.
2. UNITED INTERNATIONAL BUREAUX FOR THE PROTECTION OF INTELLECTUAL PROP-
ERTY. MANUAL OF INDUSTRIAL PROPERTY CONVENTIONS, Geneva, 1974.
3. Law of Invention and Marks, published in the Official Daily of the Federation of
Feb. 10, 1976 [hereinafter LIM].
4. In substance, Article 127 provides the following:
Every mark of foreign origin or owned by a foreign individual or corporation, which is
designed to protect articles manufactured or produced in national territory, must be used
associated with a trademark originally registered in Mexico.
Both marks must be used in a manner equally noticeable.
The provision of Article 91, Section XVII of this Law will be applicable to the mark
originally registered in Mexico.
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Property rights.
Even though the LIM does not define what is to be understood as
"foreign origin" as used in Article 127, the introduction of the bill
to Congress indicated that a trademark of "foreign origin" is one
which is first registered abroad and thereafter registered in Mexico.
Many industrial groups considered that this provision would erode
the rights derived from trademark registrations and would eventu-
ally result in loss of their trademarks. Furthermore, it was thought
that the LIM was contrary to Articles 2 and 6 quinquies of the
Paris Convention because equality between nationals and foreigners
was being breached in that a trademark should be protected "as is"
in other countries.
Article 128 of the LIM should have become effective on Febru-
ary 9, 1978, but due to an amendment of the LIM, its operative
date was postponed until February 9, 1979. This amendment of the
LIM authorized the then Ministry of Properties and Industrial De-
velopments to annually suspend, if necessary, the entering into
force of this provision.'
In 1979, several appeals disputing the validity of Articles 127
and 128 were filed by three companies. These appeals were filed
before Federal District Courts in Mexico City, claiming that the
particular provisions of the LIM were contrary to the Paris Con-
vention and to the Political Constitution of the United States of
Mexico. In essence, the arguments of the appeals were the
following:
1. Nationals of any country member of the Paris Union, as re-
In substance, Article 128 provides the following:
The acts, agreements or contracts which are made or entered into with regard to the roy-
alty bearing or free license to use a mark registered originally abroad, or which is owned by
a foreign individual or corporation, must specify the obligation that such mark will be used
or associated with a mark originally registered in Mexico and owned by the licensee.
If this obligation is not complied with, the Bureau of the National Registry of Transfer of
Technology will refuse the registration of the act, agreement or contract.
The obligation of using marks in association as set forth above must be complied with
within a period of one year from the registration of the act, agreement or contract, or from
the moment in which the foreign mark begins to be used if no act, agreement or contract has
been entered into which authorizes its use.
If this obligation is not complied with the act, agreement or contract will be void and its
registration will be cancelled.
For justified reasons, the Ministry of Industry and Commerce may extend for one year as
a maximum the period established in the foregoing paragraph.
5. Article Twelfth Transitory of the LIM; Amendment of Article Twelfth Transitory
of the LIM, published in the Official Daily of the Federation of Dec. 29, 1978; Decrees
granting extension to comply with the association or linking requirement, published in the
Official Daily of the Federation of Feb. 6, 1978, Dec. 13, 1979, Dec. 30, 1980, Dec. 9, 1981,
Dec. 6. 1982, Dec. 20, 1983, Dec. 11, 1984 and Dec. 5, 1985.
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gards the protection of Industrial Property, enjoy in all other coun-
tries of the Union the advantages that their respective laws grant or
may grant in the future to nationals.
2. Every trademark duly registered in the country of origin shall
be accepted for filing and protected as is in other countries of the
Paris Union.
3. The provisions of the LIM violate the constitutional rights of
freedom, of work and commerce, due process of the law and free
commercial competence, as well as creating discriminatory treat-
ment of foreigners.'
The District Courts accepted these arguments and declared Arti-
cles 127 and 128 of the LIM unconstitutional. However, the Minis-
try of Properties and Industrial Development further appealed the
decisions to the Collegiate Circuit Courts in Mexico City. The Col-
legiate Circuit Courts dismissed many of the appeals due to techni-
calities and, as a result, the merits of the appeals have not been
reached.
Since 1979, the obligation to link or associate trademarks accord-
ing to Article 128 of the LIM has been suspended. It appears that
since the LIM was not amended on this subject during 1986, the
obligation to link or associate trademarks will be postponed indefi-
nitely. If and when the LIM is amended, in all probability, the
linking or association of trademarks will be merely an option for
the licensee.
The other provisions of the LIM which have caused concern are
Articles 41, 42 and 48. Article 41 states in substance that the
granting of a patent implies the obligation to work it in Mexico.
Working must be started within three years counted from the date
of patent issue. Article 42 provides that the patentee must prove
working to the satisfaction of the Ministry of Industry and Com-
merce within two months of the start of working. Article 48 holds
that the patent will lapse if, at the expiration of the term referred
to in Article 41, more than one year passes without the patentee
starting working and if during this term no compulsory licenses
have been applied for.
In recent years, the Bureau of Inventions and Marks (BIM) has
6. "Amparo" appeal no. 745/78 filed by the Seven-Up Company before the Second
District Court on Administrative Matters, decided on Nov. 22, 1983, appeal to the Third
Circuit Court on Administrative Matters, decided on Oct. 4, 1984; "Amparo" appeal no.
292/80 filed by the Seven-Up Company before the Ninth District Court on Administrative
Matters, decided on May 20, 1981, pending a further appeal to the Supreme Court of Jus-
tice no. 7841/83.
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declared several unworked patents to have expired. The decisions
were appealed to the Federal District Courts in Mexico City, argu-
ing the following:
1. Article 5A(3) of the Paris Convention had been violated since
no compulsory licenses had been granted nor had two years passed
from the date the first compulsory license was granted.
2. Article 48 of the LIM contravened the Paris Convention since
instead of giving grounds for the expiration of the patent, it called
for the expiration after one year of the grant of a compulsory li-
cence without any petition for a compulsory licence.
3. The articles violated the constitutional rights of freedom of
work and commerce and of due process of law.
Unfortunately, the appeals were denied by the federal District
Courts and were confirmed by the Collegiate Circuit Courts
thereby establishing "jurisprudence." '
The rationale underlying this jurisprudence may be synthesized
into two factors. First, it is "public policy" that patents which have
not been worked in Mexico expire and consequently enter the pub-
lic domain so that third parties may freely work the inventions.
Second, the burden should be on the patentee to prove to the BIM
that before the patent expires there were applications for a compul-
sory license, or that the BIM was remiss in deciding whether to
grant a compulsory license, or that the patentee had "legitimate
reasons" for not working the patent according to Article 5A(4) of
the Paris Convention.8
It appears that the Collegiate Circuit Court did not really under-
stand the sense of the appeals, since it compared the grant of a
compulsory license to a petition for its granting and, additionally, it
reversed the burden of proof to the patentee for the purpose of
proving that no petitions for compulsory licenses had been re-
quested. Notwithstanding the foregoing, since about 1978, the BIM
has been accepting as "legal excuses" for nonworking patents in
Mexico that the patentee is a citizen or corporation from a member
country of the Paris Union such that the expiration of patents can-
not be decreed until two years after the date of the grant of the
7. Articles 192 and 193 of the "Amparo" Law, Regulatory of Articles 103 and 107 of
the Political Constitution of the United States of Mexico, published in the Official Daily of
the Federation of Jan. 10, 1936. Under our system of law, "jurisprudence" is established by
five consecutive and uninterrupted decisions rendered in the same sense which binds all Cir-
cuit and Federal District Courts of Mexico.
8. Jurisprudentia, Precedentes y Tesis Sobresalientes, Tomo Vill Administrativa,
Mayo Ediciones, S. de R.L., Mexico, 1983, No. 7643, page 272 and following.
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first compulsory license. These "excuses" are not provided for in
the LIM.
II. PROPOSED LEGISLATION
For several years, many attorneys in Mexico have been trying to
convince Mexican authorities to amend the LIM to eliminate provi-
sions which are considered obstacles to the protection of Industrial
Property. Several drafts of amendments have been prepared in the
last ten years and it appears that the LIM will finally be altered in
the near future. The Ministry of Commerce and Industrial Devel-
opment in charge of Industrial Property matters has also stated
unofficially that it is preparing an amendment to the LIM.
It should be noted that although authorities and private organi-
zations have differing points of view, there are signs that indicate
that irrespective of the manner in which these subjects will be dealt
with, the new law will address the following:
1. Product patents, including chemical compounds.
2. Method patents for pharmaceutical preparations, goods and
beverages, and new industrial, agricultural and cattle breeding uses
of chemical compounds.
3. Patents in the anti-pollution field.
4. Biotechnology patents.
5. Extension of the life of patents.
6. Elimination of certificates of inventions.
7. Elimination of the working requirements for patents.
8. Extension of the life of designs and models.
9. A complete revision of the chapter on trademarks to clarify
many provisions which cause interpretation problems.
10. Linking of trademarks to be left optional to the licensee.
11. An increase in the penalties for infringement, with respect to
prison terms as well as to fines.
In the near future, a great deal of activity between authorities
and private parties will occur to reach an understanding on the bill
amending the law. Mexican attorneys are confident that, in general
terms, the amendment to the LIM will be positive and will provide
a better instrument for the protection of Industrial Property in
Mexico.
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III. EXPERIENCES WITH BIOGENETIC PRODUCTS, PROTECTION OF
COMPUTER TECHNOLOGY, TRADE SECRET LICENSING PROTECTION
AND CROSS-LICENSING PROVISIONS IN TECHNOLOGY TRANSFER
AGREEMENTS
A. Biogenetic Products
At present, biogenetic products and processes may not be pro-
tected in Mexico under the LIM.' As previously indicated, the
granting of patents in this field presently is being considered. Addi-
tionally, Mexico is even contemplating becoming a member of the
Paris Convention for the Protection of New Varieties of Plants and
the Budapest Treaty on the International Recognition of the De-
posit of Microorganisms for the Purpose of Patent Protection.
B. Computer Technology
Computer technology may be protected in Mexico through pat-
ents and software through copyrights. Our Federal Copyright
Law' 0 does not expressly refer to the protection of software; how-
ever, the Secretary of Public Education has interpreted the FCL to
include computer programs as works made by authors, which
seemed advisable to avoid infringement. For this purpose, the Sec-
retary ordered the publication of a resolution which confirmed that
computer programs could be registered, irrespective of the means
by which they were saved. As a result, even programs contained in
ROM's may be registered."
C. Trade Secrets
Trade secret licensing is permitted under Mexican law. The
problem of protecting trade secrets is very difficult since the Penal
Code does not impose great penalties for the disclosure of secrets.'"
Additionally, for an argument of an act of unjust enrichment to
succeed, the extent of the enrichment and the detriment caused to
9. LIM, arts. 9, § V, & 10, § I.
10. Federal Copyright Law, published in the Official Daily of the Federation of Dec.
21, 1963 [hereinafter FCL].
I1. Resolution no. 114 of the Secretary of Public Education, providing for the registra-
tion of computer programs in the Public Copyright Registry, published in the Official Daily
of the Federation of Oct. 8, 1984.
12. Penal Code for the Federal District on Ordinary Matters and for all the Republic
on Federal Matters, published in the official Daily of the Federation, of Aug. 14, 1931.
Article 210 provides that a fine of from Mex. S5.00 to $50.00 and a prison term of from two
months to one year will be imposed on whomever discloses a secret without a justified reason
to the detriment of a third party.
1987]
6
California Western International Law Journal, Vol. 17, No. 2 [], Art. 13
https://scholarlycommons.law.cwsl.edu/cwilj/vol17/iss2/13
CALIFORNIA WESTERN INTERNATIONAL LAW JOURNAL
the affected party must be proved.' 3
D. "Know-how"
Technical assistance, "know-how" and license agreements are
subject to recordation by the Law on the Control and Registration
on Transfer of Technology and the Use and Exploitation of Patents
and Trademarks."' Failure to record such agreements with the Na-
tional Registry of Transfer and Technology renders an agreement
null and void and unenforceable by the courts.' 5
Under Article 15, Section II of the LTT, agreements will not be
recorded if they contain an obligation on the part of the licensee or
party acquiring the technology to assign to the licensor or supplier
of the technology, either free, or for consideration, patents, trade-
marks, or improvements developed by the licensee or acquirer. This
prohibition also applies to grant-back licenses. However, an excep-
tion to the prohibition is contemplated when the assignment or
grant-back license is established in reciprocal terms or is beneficial
for the acquirer or licensee.
Reciprocity in this aspect should be evaluated taking into consid-
eration the payments, degree of exclusivity and territory as well as
the benefits that result to the acquirer or licensee due to the ex-
change of information."
13. Civil Code for the Federal District on Ordinary Matters and for all the Republic
on Federal Matters, published in the Official Daily of the Federation of Sept. 1, 1932.
14. Law on the Control and Registration on Transfer of Technology and the Use and
Exploitation of Patents and Trademarks, published in the Official Daily of the Federation of
Jan. II, 1982 [hereinafter LTT].
15. LTT, art. II.
16. LTT. art. 15, § II; Regulations to the LTT, published in the Official Daily of the
Federation of Nov. 25, 1982.
[Vol. !17
7
Soni: Recent Development of Industrial Property Rights in Mexico
Published by CWSL Scholarly Commons,


Recent Development of Industrial Property Rights in Mexico

Cabrera, Sigfredo A.

Negligence Liability of Landowners and Occupiers for the Criminal Conduct of Another: On a Clear Day in California One Can Foresee Forever

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Insurance Law: Public Policy Permits Insuring Against One\u27s Own Intentional Acts of Discrimination

Settlement of the Question of Hong Kong

The Nicaraguan Military Activities Case (Nicaragua v. United States of America)

Protection of Cultural Property

Recent Development of Industrial Property Rights in Argentina

Recent Development of Industrial Property Rights in Mexico

Negligence Liability of Landowners and Occupiers for the Criminal Conduct of Another: On a Clear Day in California One Can Foresee Forever

Share Valuation -- A Chance for Financial Literacy

Corruption in Mexico: Implications for U.S. Foreign Policy

United States Class Actions in Private International Law Decisions

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2,208