Legal Review: How to Handle Counterfeiters on Alibaba.com
1 Apr, 2006 By: Gregory J. Sater ResponseGot a hit product? Chances are, somewhere in China somebody is offering a counterfeit of it right now on Alibaba.com. If you have never looked at Alibaba.com you definitely need to check it out. Alibaba.com is a legitimate, above-board and very successful electronic commerce platform that helps sellers based in China advertise and exchange information about their wares with potential buyers around the world.
 Gregory J. Sater |
There are more than a million listings on Alibaba.com and while it does not engage in the direct sale of the products that are listed by sellers on its site and is not privy to the transactions that are entered into between users of its site, it is an unfortunate reality of the modern world that counterfeiters love to post their offerings on the Alibaba Web site. Counterfeiters use the site as an easy and inexpensive way to attract and then to do business with prospective buyers around the world.
Unscrupulous people looking to buy counterfeits just need to go to the Web site and type in the name of the hit product they want copied. Chances are, many search results will come up and will provide contact information for sellers in China offering copycat products. Many of the postings go into great detail, even including photographs of the counterfeits.
Alibaba.com has publicly stated that it is committed to protecting intellectual property rights, and that it does not condone the infringement of such rights by users of its Web site. In addition to making that public statement, Alibaba has implemented a procedure for addressing intellectual property infringement claims.
What is the procedure, and what is the best way to go through it and get a good result?
I have gone through this process many times — for many clients — and in most cases, Alibaba has acted quickly to take down the counterfeit offerings — usually within a matter of days. The key is polite but persistent prodding by legal counsel, along with the assertion of as many registered intellectual property rights as you can possibly bring to bear.
The first thing to do is to gather all information at your disposal regarding the trademark, copyright or patent rights that you own or control with regard to your product. If you have registrations, get the registration numbers, dates and countries of registration.
Alibaba responds better to registered rights; unregistered rights, for example in trade dress or in common law trademarks, can prove more difficult. Also, getting a quick and positive response from Alibaba is easier when you have registered your trademarks or patents in more than one country.
Copyrights count, too; indeed, it is beneficial to own a registered U.S. copyright to the text and images found on your product packaging, and to the content of your TV infomercial or spot, because many counterfeiters on the Alibaba Web site post images of exact replicas of packaging and/or display images taken from spots and infomercials, and Alibaba will take down all of those things if you have a registered copyright.
The next step is to go to Alibaba.com and obtain a copy of a form entitled "Notice of Claimed IPR Infringement." The form will ask you to declare, under oath, that you own or control the intellectual property rights to the product, will ask you to list all of those rights in detail, and will ask you to identify the specific Alibaba Web pages on which you have seen the counterfeits.
I recommend that in addition to giving Alibaba this form, you also submit a color printout of the counterfeits you found on the site and a color printout of your authentic product offering in sufficient detail to show Alibaba what your authentic product and its packaging look like. After sending in the form and the printouts, you need to stay in contact with Alibaba and make sure that your claim has not gotten lost in the shuffle.
The removal of the infringing offers is not automatic; if the counterfeiter contests your claim, after you send it to Alibaba, the offer may not be removed from the site, and you may need to initiate legal action.
Gregory J. Sater is partner in a Los Angeles law firm. He specializes in intellectual property, advertising and marketing law and can be reached at (310) 286-1700.
