Asia-Pacific Team of the Year: Alibaba
With a record initial public offering (IPO) in the United States, heightened regulatory scrutiny at home and high-profile lawsuits ongoing, Alibaba Group was never far from the front pages in the last 12 months. The team charged with protecting the Alibaba brand – led by senior legal counsel, intellectual property Karen Law – continued to grow in the wake of several major acquisitions: new portfolio companies, meaning new brands, and new hires in Guangzhou and Beijing to complement the Hong Kong and Hangzhou-based IP team. “Our team has grown bigger, as we now number 13,” says Law, who just six years ago was the standalone international IP specialist at the company.
Matthew English (Marks & Clerk) and Karen Law (Alibaba) onstage
With this increased headcount, Law explains, “we have been working on more international strategy development across all business units, including portfolio management, licensing strategies, enforcement strategies and policy development. Personally, I have been spending more time on how we can influence policy and legal developments on branding and internet-related issues and, after the IPO, trying to initiate enforcement actions more aggressively so as to build up some favourable case law – at least in China and the Asia-Pacific region.”
Law observes that, especially on the enforcement side, the practice is evolving rapidly: “We have been very proactive on enforcement – we are not just responsive. We have several monitoring systems helping us to drive our quite aggressive strategies. Through enforcement action, we are not trying to penalise wrongdoers; but we have tried to educate people about what they should do and should not do.”
The team at Alibaba clearly aspires to break the mould of defensive-minded IP strategies in the region. “My team has taken a very aggressive approach to IP protection, which covers a lot of work beyond just brand portfolio management,” says Law. “Contribution to the industry through sharing and training is another task that I have asked my team to do from time to time. We have been active in international associations, where we share and learn in different sessions and meetings. We have to be the leader, the first in the industry; and thus we have to be proactive and forward looking instead of just attached to defensive protection.”
As an e-commerce company, domains – in particular, the new generic top-level domains (gTLDs) – stand out as a hot-button issue for Alibaba. “The launch of the various new gTLDs will continue to be a challenge for brand owners,” predicts Law. “We have to do more on registration as well as enforcement. Various policies on enforcement developed by ICANN and by local authorities have kept us busy in learning and implementing our strategies in different jurisdictions.”
The group believes that a commercially oriented mindset is vital in building a successful IP team. “Be proactive, be international and contribute to the industry and society,” urges Law. “We work as an IP legal team which adds value to the company and also drives business. We are not just spending money to accumulate IP assets for the company; we use our IP knowledge and expertise to help business teams to drive new business and add value. I treat my team not just as a back office for the company, which many legal teams do. I treat my team as an active partner to the business and need everyone to be close to the business. Legal analysis should not compete or block business decisions, but should help the company to make better business decisions.”
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