Profile: Karen Law, Senior Legal Counsel, Alibaba Group
Karen Law, Senior Legal Counsel of Alibaba Group, talks to the INTA Daily News about where it faces its biggest brand enforcement issues (hint: it’s not China), what she looks for when selecting outside counsel and why the least expensive lawyer isn’t always the best.
How long have you been with Alibaba? Where were you previously?
I’ve been at Alibaba since March 2009. Before that I was a Senior Associate with the U.S. law firm Troutman Sanders’ Hong Kong office, and before that a local Hong Kong firm, So Keung Yip & Sin. In all of these positions, my practice involved intellectual property and information technology.
How big is your team and what are your responsibilities?
I was the first lawyer at Alibaba who was tasked to exclusively deal with all IP issues except for patents. Initially we had a very small team, just myself and one paralegal. At first, our responsibilities were mainly trademark and domain name applications around the world, excluding mainland China.
The role has grown since then. In addition to Alibaba’s global trademark and domain name portfolios, our team is also responsible for the company’s copyrights, enforcement work, technology, licensing and IP advisory in M&A projects and transactions. I have also been leading the team in working on the new gTLD matters since 2010. Our team now has 10 members consisting of four qualified lawyers including myself, four paralegals with legal assistant and legal secretary.
Four of our team members are based in mainland China and the rest are based here in Hong Kong. We basically handle all of Alibaba’s IP, except for patents; there is another team consisting of patent attorneys based in mainland China which handle the day-to-day patent applications.
In addition to maintaining Alibaba’s portfolios, we also provide support when intellectual property is involved in other situations, such as in licensing and M&A deals.
We also manage administrative actions, litigation and arbitration matters that arise. We use outside law firms for these cases, as well as online platforms like MarkMonitor and WebTMS to help manage our portfolios, conduct online watch services, brand monitoring and enforcement work, but of course we have to analyze the merits of the cases, send out cease-and-desist letters and consider instructing external firms to handle complicated matters should they arise.
Does your team also handle matters involving the intellectual property of those using Alibaba’s services, such as brand owners asking to have counterfeits pulled off of Taobao?
We did assist with some of those matters, but preliminarily that work is usually handled by lawyers in that particular business unit and our product security team. My team is responsible for handling Alibaba’s own intellectual property prosecution and enforcement work.
What are some of Alibaba’s big brands?
Our biggest brand is of course ALIBABA (阿里巴巴) itself, which is the name of the group of companies, but also of our business to business marketplace (www.alibaba.com). TAOBAO (淘宝), our customer-to-customer marketplace is also a big brand for us. TMALL (天猫), ALIEXPRESS, 聚划算 (Juhuasuan, a group purchasing service), ALIYUN / ALIBABA Cloud Computing (阿里云), ALIPAY (支付宝, a third-party independent payment solution), are also our important brands.
We have many more brands and marks, ranging from core brands to product brands to defensive brands, but these are probably our biggest ones.
You mentioned the new gTLDs. What plans do Alibaba have for them right now?
We’ve registered several of the new gTLDs with our brands, including .alibaba, .alipay, .tmall, and .taobao. Our initial reason for registering them was mostly to defend our brands, but I think the company is going to think of other ways to use them as well.
The company is also actively involved in the ICANN meetings and sharing, and treasures every opportunity to focus and share views on Internet security, domain matters, Internet governance and related matters, both from a brand owner perspective and an Internet user perspective.
Did you register any Chinese-language gTLDs?
No, not at this time, but that might be something to consider in the upcoming round in the future.
Which jurisdictions are the biggest for Alibaba?
Our IP portfolio covers about 150 countries. Mainland China is our biggest market and about half of my team’s work. After mainland China, Russia, the U.S., and the EU are probably the biggest. We have significant B-to-B and B-to-C marketplace operations in those jurisdictions.
While we have some trademarks that are unique to China, many of them are also international, such as ALIBABA, TAOBAO, TMALL, ALIPAY AND ALIEXPRESS.
What are some of the IP-related challenges that you face? Do you face the same sorts of problems in different countries?
We face more challenges in the Middle East and Russia than in other regions.
With Russia, perhaps it’s the geographical proximity, but we find ourselves often working with our Russian attorneys. There have been several companies there claiming to be Taobao or Alibaba exclusive resellers, which may arise because of language barriers with the users and also some of the challenges in enforcement. We have had success in both revoking trademarks that infringe on our IP and also in recovering domains, such as alibaba.ru.
With the Middle East, our problems tend to stem from the Alibaba story, which is obviously very well known there. Therefore, not only do a lot of people use the exact or similar trademark, but we have also faced oppositions on the basis of the story. These oppositions have failed however, in part because this company is so well known as a global marketplace.
In addition, a couple of years back we had quite a few cases in India where our brands were being used for other services like food and catering. However, we have been successful at opposing such registrations and enforcing against these uses.
In China, we have been working hard in securing well-known status for our core brands in Chinese, including 阿里巴巴 (ALIBABA), 淘宝 (TAOBAO) and 支付宝 (ALIPAY) marks, which helps with protecting them and the enforcement work.
What qualities do you look for in outside counsel and service providers?
Most importantly, we look for expertise and efficiency. We have our businesses on the Internet, so we need counsel who understand our markets, keep up with the changes in the laws and are fast and responsive.
Price is important to us of course, and when we look for help in managing our portfolios, we usually are able to obtain a favorable discount given the volume of work we have.
That said, we are not necessarily chasing after the absolute lowest price. As long as the price is reasonable, I am fine with it. I was at a large U.S. firm, so I understand that good legal work is not always the cheapest, and can be worth it.
English language skills are important as well. For countries like Japan and India, we look for lawyers that can write well in English, because that’s how we communicate with them.
What activities do you recommend for INTA delegates visiting Hong Kong for the first time?
For those in Hong Kong or the region for the first time, I would recommend that they take advantage of the proximity to mainland China and try to learn as much as possible, by trying to meet the people and getting to know the culture. People have their own way of working in China, so learning about that will be very helpful.
For leisure, I would recommend sites like The Peak or Lantau Island for some good sightseeing. I think that while some people will want to do things like go to Disneyland, this is also an opportunity to try to experience some more unique Chinese things.