Alibaba.com is the world’s largest online business to business (B2B) marketplace. If you are a creator, designer, inventor, product marketer, brand builder, or anyone else interested in global commerce or trade in consumer goods, you have probably either purchased from sellers on Alibaba.com, or cursed at sellers on Alibaba.com. Or maybe both.
Fakes and counterfeits run rampant on Alibaba. From knock off branded products to copied textile designs to patent infringing devices, you can buy it all in bulk on Alibaba.
Alibaba has many small businesses baffled. How can a marketplace built on ripping my products off exist? Many small business owners who ask that question believe that there is nothing that can be done about the rampant copyright, trademark and patent infringement that seems to flourish unchecked on Alibaba.com.
Contrary to popular belief, effective strategies do exist for stopping the flow of infringing goods through Alibaba.com. You need to know how to use your intellectual property rights to your advantage and make the confusing Alibaba.com IP rights (IPR) system work in your favor.
The Alibaba.com Intellectual Property Protection System, known as AliProtect, resides at legal.alibaba.com. In 2014, Ni Liang, Senior Director of the Security Department for Alibaba Group, presented a paper on Alibaba.com’s IP protection practices at the Ninth meeting of the WIPO Advisory Committee on Enforcement in Geneva, Switzerland. According to Mr. Liang,
Alibaba has directed attention to IP protection since the first day of its foundation. Through various experiments and measures, the Alibaba Group has gradually established an IP protection system consisting of diversified functions, such as complaint processing, proactive management, government collaboration, brands cooperation, and awareness-raising. At present, the Group spends over 100 million yuan each year fighting inferior and counterfeit products. It has established a 5,000-strong professional IP protection team consisting of staff from relevant departments and online volunteers. In the past year, Alibaba removed more than 100 million hyperlinks to products suspected of IP infringement.
Reporting infringement through the AliProtect system is a multi-step process. The steps are:
- Submit proof of your intellectual property rights, be they trademarks, copyrights, utility patents, or design patents. For each IP right you must upload evidence of that right, such as the trademark registration certificate, copyright certificate, or the issued patent. You must also provide evidence of your ownership of that right. For example, if the IP right is owned by a corporation or limited liability company, you must upload the articles of incorporation or formation. Finally, if an attorney or other representative is submitting the IP right on behalf of the owner of the right, a power of attorney is required.
- Once all the documents are submitted, they are reviewed by the AliProtect system group and either accepted or rejected. If rejected, AliProtect will usually send an email that explains the reason for the rejection and provides information about what must be done to fix the problem. Sometimes these emails are written in broken English which complicates the process. Often several tries are needed to get IP rights accepted and recognized by Alibaba.com. Once AliProtect has “approved” an IP right, it can be found in the “Submitted IPR” section of the AliProtect Dashboard.
- The next step is to submit complaints. Complaints can be submitted either by searching keywords directly from the IPR Complaint section of AliProtect, or by pasting URL’s into the IPR Complaint interface. A coherent and legally valid reason must be given for each Complaint. That reason should match the IP right on which the Complaint is based. For example, if the IP right is a trademark, the reason for the Complaint should have something to do with the merchant’s unauthorized use of the trademark in the listing.
- Once a Complaint is submitted, as with DMCA takedowns, Counter-Notices are possible. However, in our experience these are rare. If a Counter-Notice is given, the AliProtect Dashboard provides a place for a response.
- Following the review of Complaints, AliProtect will mark them as either “In Progress,” “Unable to Process,” or “Listing Removed.” AliProtect will send an email if a Complaint is unable to be processed and provide a reason (often, once again, in broken English). However, no notice is given when listings are removed. For those you have to check back with AliProtect to see the outcome.
While it seems simple, there are bumps along the way. Also, the unfortunate reality is that the problem is rarely solved with the submission of a single Complaint. Think about the game called “Whack-a-Mole” and you will come to understand the problem fairly quickly.
Happy hunting!
About Joel Rothman
Joel B. Rothman represents clients in intellectual property infringement litigation involving patents, trademarks, copyrights, trade secrets, defamation, trade libel, unfair competition, unfair and deceptive trade practices, and commercial matters. Joel’s litigation practice also includes significant focus on electronic discovery issues such as e-discovery management and motion practice relating to e-discovery.
