Ideas Are Not Registrable: The Limits of Exclusivity over Expression in Mexico

On Direct Amparo Appeal 33/2017 and the “Guadalupana Niña” Case¹

In copyright law, we are accustomed to hearing that ideas cannot be protected. The rule seems straightforward enough. The trouble begins when we are confronted with two works that spring from the same idea, bear a resemblance to one another, and—to make matters worse—we know that the author of the second was aware of the first.

At that point, the answer is no longer obvious.

Saying that two works look alike is one thing. Determining what exactly they have in common—and, more importantly, whether that overlap falls on something over which exclusivity can legitimately be claimed—is another matter entirely.

That is precisely what makes Direct Amparo Appeal 33/2017 (equivalent to judicial review), decided by Mexico’s Supreme Court, so instructive. The case involved works known as “Guadalupana niña” and various designs related to the Virgin of Guadalupe that were subsequently commercialized under the Distroller brand.

Beyond the outcome of the litigation itself, the case forces an inquiry far more useful in intellectual property than simply asking whether copying occurred:

How far does the right of exclusivity actually extend when two authors draw from the same source?

I. A Shared Source Does Not Mean a Shared Work

In 1996, Mercedes Gertz Loizaga created two works titled “Guadalupana niña”: a drawing based on the Virgin of Guadalupe depicted as a child and an engraving of that drawing on a .925 silver plate. Both were registered that same year with Mexico’s copyright authority.²

Between 2005 and 2007, Amparo Serrano Espinosa obtained several registrations before INDAUTOR (Mexico’s National Copyright Office) for drawings and graphic designs also related to the Virgin of Guadalupe, as well as trademark registrations before IMPI (Mexico’s Industrial Property Office). Those designs would later become widely known in Mexico through their commercialization under the Distroller brand. Distroller.

In 2010, Gertz Loizaga filed a lawsuit seeking the cancellation of Serrano’s registrations. The dispute lasted eight years and changed direction three times. Initially, the court ruled in Gertz Loizaga’s favor and ordered the cancellation of Serrano Espinosa’s registrations. That decision was later split: the cancellation of the design registrations as copyrighted works was upheld, but the trademark cancellations were denied on the ground that no industrial property violation had been established. 

Subsequently, a reviewing court examined the full record, and concluded that the evidence had been improperly evaluated, and remanded for a new decision with proper evidentiary analysis. Under those guidelines, the case ultimately resulted in Serrano Espinosa’s acquittal. Gertz Loizaga then sought review before the Mexican Supreme Court, which elected to exercise its discretionary jurisdiction given the importance of the case and, in May 2018, ruled against her.³

By that stage, however, the Supreme Court was no longer free to revisit every aspect of the dispute. Certain issues had been definitively resolved at earlier stages of the proceedings and were clothed in res judicata. One such determination was particularly significant for the case: it had been established that the works of both authors were inspired by or based on the image of the Virgin of Guadalupe.⁴

This is a critical point because it transforms the entire analysis. If two works derive from a common source that belongs to the public domain, similarities will inevitably exist—both are, after all, depicting the Virgin of Guadalupe. The real question is which of those resemblances flow from the shared source material and which genuinely reflect each author’s independent creative choices, over which exclusivity may legitimately be claimed.

II. What, Then, Did the “Guadalupana Niña” Registration Actually Protect?

Article 14, subsection I, of Mexico’s Federal Copyright Law provides that ideas, as such, are not subject to protection.Article 9.2 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement) embodies the same principle: copyright extends to expressions, not to ideas.

The Court drew an important distinction that some lower tribunals had overlooked. It recognized that Mercedes Gertz had not merely registered the idea of depicting a “child Virgin”—she had registered two concrete works.

In other words, a protectable creation did exist. What could not be done, however, was to stretch that protection so far as to render exclusive the very concept of depicting the Virgin of Guadalupe as a child. Nothing in the law prevented others from taking that same idea and giving it a different form.

The Supreme Court did acknowledge originality in “Guadalupana niña,” classifying it under the second prong of Article 4, Section C, subsection I—works that,“being based on another, possess characteristics sufficient to affirm their originality”—that is, derivative works. But the Supreme Court drew a crucial boundary: it held that the originality in question resided solely in the specific drawing technique used to render the image. It did not extend to the form, the arrangement of the image, or the position of its components, all of which derive from the Virgin of Guadalupe herself.⁵ 

From that premise, one can see that what both works share—composition, positioning of elements, and the decision itself to depict the Virgin with childlike features—does not constitute protectable originality. 

The Supreme Court did not deny the work’s originality. It held that not everything appearing in the work could be attributed to its author as original. Where the commonalities between two works belong to the public domain or necessarily follow from the shared source, that overlap cannot, by itself, establish infringement.

That said, the same reasoning leaves open a point worth discussing. While the general logic of the decision is sound, the manner in which the Supreme Court delineated the scope of originality is debatable.

The Supreme Court located the originality of “Guadalupana niña” exclusively in elements such as the outline, the absence of color resulting from the engraving on a plate, and the style of the linework. It excluded the composition of the work as a potential element of originality. This is noteworthy because the very WIPO (World Intellectual Property Organization) doctrine cited in the opinion recognizes that a work may be original both “in its composition and content” and “in its expression or form.”

 The decision thus starts from a broad definition of originality but, at the moment of application, appears to embrace only part of it.

This is particularly relevant for works built from preexisting elements. In such works, the author’s creative contribution may reside precisely in the particular way she chooses to organize and combine those elements. 

III. Practical Takeaways

In light of the foregoing, this case yields several useful conclusions for intellectual property practitioners.

The first is that a copyright registration is declaratory rather than constitutive (i.e., registration evidences but does not create the right—similar to the U.S. principle that copyright vests upon fixation, not registration) and does not transform an idea into a protectable object. Holding a registration does not mean holding exclusivity over everything that surrounds the work. Registration evidences a particular creation; it does not convert its underlying concept into property.

The second is that, when the subject matter belongs to the public domain, practitioners must identify from the outset what the author actually contributed. If someone uses a religious image, historical figures, folkloric elements, historical works of art, or any other freely available source, the author’s rights attach to her own execution—not to the source material.

The third takeaway is evidentiary: what must be documented is the execution, not the idea. That means precise descriptions of the technique, linework, proportions, and other elements added by the author that do not originate from the source. 

Finally, the case illustrates why intellectual property cannot always be analyzed through a single legal framework. Copyright protects one thing; a trademark protects another; an industrial design (analogous to a U.S. design patent) is subject to different requirements altogether. Knowing what we want to protect is as important as deciding how to protect it.

IV. Conclusion

In Direct Amparo Appeal 33/2017, the Supreme Court concluded that the law does not protect having thought of something first. What it protects is the concrete form in which that thought was made into a work.

This distinction does not remain in the realm of theory—it surfaces constantly in practice. One of the most common errors in copyright law is the assumption that having developed an idea first confers, by itself, a right to prevent someone else from arriving at a similar proposal through his/her own mode of expression. 

Consider, for example, a story about a group of young people who become entangled in a crime. That premise could give rise to a hundred entirely different works without any of them necessarily constituting plagiarism of another. What is protectable lies in the concrete manner in which the characters, scenes, dialogue, and particular elements are developed to construct and give form to the work. 

The implication for intellectual property strategy is clear. When the distinguishing features of a project cannot be protected by copyright, protection must be built through other assets: a trademark and its effective use, industrial designs, trade slogans, confidentiality agreements, or ownership and non-compete clauses in contracts with creatives and collaborators—whether in-house or external—among other instruments.

In other words, a sound intellectual property strategy does not consist of trying to protect an idea as such, but rather of identifying and protecting the assets constructed around it. It is telling that, in this very case, the party who built a portfolio of trademark registrations around her designs was the defendant.

A single idea can inspire a hundred works, and all hundred can be different. The law does not decide who may think that idea again. It decides how far one person may appropriate the form in which another chose to express it.