We recently interviewed Karen Law, Senior Legal Counsel IP of Alibaba. In the second part of the interview, she shares with us her experience of coping in a global network and gives her precious advice to companies in terms of IP protection.
You can find the first part of the interview here.
Karen Law. I believe it very important to have a network of trustworthy peers both internally and externally. Thank God I am supported by a network of local agents and attorneys that can help solve problems efficiently in various countries and at reasonable costs. I have been working in the IP legal field for over 14 years, and when I was in private practice I used to serve clients originating from different continents for international portfolio management and enforcement work. So luckily my network of in-house counsels may share the same “pain”, and of course private practice peers whom I trust and can work closely with.
E-commerce business is fast-paced, and sometimes we have to handle work ourselves, not because we are smarter, but to save time and ensure prompt response. One can expect that working at an e-commerce company means you have to work very efficiently and cope with hours according to the demands of your teams. Indeed, I work long hours so as to serve our business teams. Improving efficiency and having a better sense of prioritizing tasks are ever my goals in the new year!
Leaders League. Could you come back to one of the most complex questions you’ve had to face during your work at Alibaba?
K. L. The most complex question would be to overcome the cultural and jurisdictional barriers. As I mentioned, we have to do outreach and coaching so as to ensure that every employee is aware of our policies, guidelines and strategies. We have offices in more than 50 cities over the world, and just in terms of the legal department, we have staff in the US, the UK, HK and a few cities in mainland China. We thus have to dedicate a lot of efforts to liaise with employees internally to ensure that everyone is on the same page.
We also need to do lobbying with various governments and organizations as our IPs are protected worldwide. I believe that this is the most difficult work as our people come from different backgrounds and places, and thus have different levels of knowledge and understanding on IPs. We have to ensure that all on board understand and are willing to follow the rules. IP protection and enforcement is not always a priority to all the teams, as each team has its own KPI, and sometimes people in China just misbelieve that what we are doing is a back-office thing adding no substantial value nor contributing to their KPI. It can therefore be frustrating when people from different backgrounds, understandings, and values work on IPs and IP protection. As I believe that everyone is unique, I feel it may be difficult to coach and promote values in a company with diverse populations, but necessary as we move forwards.
Moreover, being an in-house legal in Alibaba doesn’t mean that you are a legal specialist alone, but rather, as we embody as strong business sense, that you use your legal expertise to help drive business and add value to the company, as well.
Leaders League. In terms of IP issues, any advice for Chinese companies expanding abroad? How about for international companies targeting China?
K. L. As I mentioned in many forums and seminars, Chinese companies should take more active steps to protect their brands (at least trademarks and domain names) worldwide and not just in China. I have the impression that Chinese companies tend to do very well in China trademark protection but have not expanded or striven for protection overseas. Bad faith registration is a matter that happens not just in China but also in many other countries, especially nowadays when the Internet helps promote brands and products worldwide. As trademark right is jurisdictional in nature, if we do not act now, it is likely to be too late when someone registers our brands. Another issue is domain name protection. Chinese companies tend to do less to ensure domain names, but we should be aware that cybersquatting activities are very prevalent nowadays and affect domain names! We have to adopt strategies on domain name protection and manage issues such as security and data privacy in order to expand efficiently abroad. Chinese companies seem not to be keen on protecting their brands in cyberspace, for example, new gTLD issues such as Trademark Clearinghouse and Domain Protected Mark List are not given enough attention.
For international companies targeting China, I would advise that China trademark protection is first-come-first-serve. You should file in China and subscribe to regular watch services to ensure that your brands won’t be taken by third parties within the country. I know that China is one of the top 5 countries of bad faith registrations. We have to act quickly, file in China as the tier one jurisdiction when the trademark is ready, engage local attorneys or agents to watch, and enforce our rights whenever necessary.
Leaders League. What are the IP pitfalls to avoid during an acquisition?
K. L. The pitfalls would be carelessness in doing the IP due diligence exercise and ignorance of the possibility of integration of the IPs well before the closing. My experience is that people are not keen on spending time working on the IP due diligence exercise, nor on asking questions as to the chains of title, and so on. People may be more interested in spending resources on due diligence exercise on tangible assets, but they must remember that IPs are intangible assets which can be valuable, and doing comprehensive due diligence exercise on IPs can help determine whether more detailed warranties and indemnities clauses are needed. In doing due diligence exercise, we should not just accept the fact that the target companies have such IPs, but also consider advising these companies in rectifying and doing more to make their IP portfolios look better and more helpful.
Read more business insight in our next International Report of Innovation and Technology. Publication in April 2015.
Jeanne Yizhen YIN