A few weeks ago, newspapers in Mexico City informed about an administrative infringement action with the Mexican Patent and Trademark Office (MPTO) against the person in charge of the website sportflix.net[1]. The MPTO confirmed the news through a press release dated August 30, 2017[2].

Sportflix claimed to be a Mexican Internet platform that, by means of a subscription, offers streaming services of sport events broadcasted by companies such as ESPN, Foxsports, Televisa and TV Azteca, among others. Actually, Mexican press often identified Sportflix as the “Netflix of sports”[3]. When questioned about licenses and authorizations to stream other’s transmissions, the alleged VicePresident of Sportflix said that their activities would not harm the exclusivity rights of the broadcasters because Sportflix is a streaming service, not a TV broadcaster[4].

Sportflix.net was scheduled to start streaming on August 30, 2017, but no content seems available yet. The site states that it still welcomes subscribers.

The WHOIS information available on September 28, 2017, states that sportflix.net belongs to someone identified as “Ninja Mortal” (I guess translation is not necessary) addresses at Patzcuaro, state of Guerrero, Mexico[5] (Patzcuaro is actually at the state of Michoacán, not Guerrero). SPORTFLIX is a registered Trademark in Mexico for services in International Classes 38 and 41, with registration numbers 1,758,031, 1758,032, 1,758,033 y 1,745,868 (issued in 2016) in the name of Matías Jacobo Said.

The press release of the MPTO states that there are, at least, two infringement actions: one related to trademark infringement and probably unfair competition; and the other associated to copyright infringement (the MPTO has jurisdiction on copyright infringement cases when related with trade). The MPTO did not explain exactly what causes of infringement were involved in the infringement actions against the streaming platform. The MPTO also enforced preliminary measures on the person/entity in charge of sportflix.net.

Although the MPTO did not identified the copyrights that sportflix.net was allegedly infringing, it stated that the infringement actions involved the defense of Mexican trademark registrations numbers 689,527 TELEVISA & Design, 1,637,894 TELEVISA & Design (both owned by Mountrigi Management Group Ltd.), 568,659 TV AZTECA & Design (in the name of TV Azteca, S.A. de C.V.), 606,147 FOX SPORTS & Design, 606,148 FOX SPORTS & Design (both owned by Twentieth Century Fox Film Corporation), 532,938 ESPN (in the name of ESPN Inc.), 802,767 TNT & Design (owned by Turner Network Television, Inc.) and 413,704 UNIVISION & Design (in the name of Univision Communications Inc.).

I am sure the sportflix.net case is full of interesting substantive issues and questions. However, right now, I am interested in only one aspect of the case: the MPTO filed the infringement action ex officio. When the MPTO starts an infringement action ex officio, one official of the MPTO prepares and files the action as plaintiff, while other official of the MPTO (not necessarily of higher rank) manages the procedure and renders a decision. Of course, there is no way to avoid a bias when the case, filed by one official of the MPTO, is to be solved by the guy sitting just two desks away.

There is no question that the MPTO has authority to file infringement actions ex officio and decide them. Sections 79, 155 and 188 of the Industrial Property Law authorize the MPTO to prepare, file and decide infringement, invalidation and cancellation actions. Actually, section 188 of the Industrial Property Law was amended on June, 2010, to encourage the MPTO to filed and decide infringement cases ex officio.

The fact that the MPTO may be more proactive in filing ex officio actions is positive in general. However I think the MPTO has to be careful about the justification to file an action ex officio.

All actions taken by the MPTO, especially if they involve starting ex officio a procedure against an individual or entity, must have as ultimate motivation the defense of public order or common good.

Preparing and starting ex officio an infringement action demands the use of the MPTO’s human and material resources and spending taxpayers’ money that will not be used in other tasks. Therefore, I believe the infringement procedure has to be aimed to cause a direct, clear, identifiable and specific benefit for the community in order to justify filing it ex officio. Infringement of the law and defense of legitimate private trademark rights is just not enough. Further, in the case of sportflix.net, the MPTO enforced preliminary measures, thus the MPTO is liable for the damages an losses that the preliminary measure may cause on the defendant, in the unlikely case that the MPTO decides there was no infringement. If the MPTO has to pay an indemnification, it will be with taxpayer’s money.

Again, it is good that the MPTO shows more willingness to start infringement actions ex officio. Neverthless, I am sure that Mountrigi Management Group Ltd. (owner of the Televisa trademark), TV Azteca, S.A. de C.V., Twentieth Century Fox Film Corporation, ESPN Inc., Turner Network Television, Inc. and Univision Communications Inc. have enough resources and know-how to strongly defend their trademarks and broadcasting rights in their own. Why then spending taxpayers money in defending them in an ex officio infringement action?

Without a proper and thorough justification about the higher good it pursues with the ex officio infringement action, the effectiveness of such procedures may be affected and the MPTO risks been seen as a government agency serving a few powerful interests instead of pursuing the common good. That would not be good for the MPTO, for the tradematk owners and for the IP system in general.

[1] El Financiero (Online edition: http://www.elfinanciero.com.mx/empresas/impi-investiga-a-sportflix-por-presunta-pirateria-de-contenido.html) Retrieved: September 28, 2017. Reforma (Online edition: http://www.reforma.com/aplicacioneslibre/articulo/default.aspx?id=1198259&md5=b2c3d9b354142bff90dd47d281c9c806&ta=0dfdbac11765226904c16cb9ad1b2efe) Retrieved: September 28, 2017.

[2] Ver https://www.gob.mx/impi/prensa/el-impi-realiza-acciones-respecto-de-sportflix-net

[3] Milenio (Online edition: http://www.milenio.com/hey/television/netflix-sportflix-ciudad_mexico-donde_ver-futbol-liga-partido-online-internet_0_1001299934.html) Date of review: September 28, 2017.

[4] La Afición (Online edition: http://laaficion.milenio.com/futbol/sportflix-deportes-streaming_deportivo-transmisiones_online-milenio-la_aficion_0_1004299573.html) Retrieved: September 28, 2017.

[5] https://mx.godaddy.com/whois/results.aspx?domain=sportflix.net&recaptchaResponse=03AOmkcwIA64Q5WivkGvjyQTh8xQIo3VgFOh6bts8-zI1fPrMn21x6wZ-gMGZ8CxE5MnLgaOrSk2lEJcrcQ2cfEbwZx_plEHDVPaoUFJLuPgqixFd44bSk-Qk1VjuKQOsMnsyMSHixNemCnDM0qcGPm7LjqDwngwsD0KRPWMkFGdrLqfIfcYLfof3Bamm6DymV_zSyk2A__w3enXdVhAoaGHaHMv7nAB8_rJOWf3frhdN9QCGhLWAKjLBsIiH4Gax9wnby45fbxaN–k0pWoJYJAEGGdVWSxFDPxifTNlcLNbpIIGl8qrUq3Nf_rY868mvGTMx8rhSPtlq. Retrieved: September 28, 2017.