My Copyright is Unregistered: Can I Still Take Down Counterfeits from Alibaba?

In How To Take Down Counterfeits From Alibaba and Other Chinese E-Commerce Site, we gave you the basics on removing products from Alibaba (and other Chinese e-commerce sites) that infringe on your IP:

If your IP (your trademark or your copyright or your patent) is registered in China, securing removal of products from Chinese websites that infringe on your IP is relatively easy. If your IP is registered in a country other than China, securing the removal from Chinese websites of products that infringe on your IP can be accomplished, but not always. If your IP (your unregistered U.S. trademark, for instance, or your unregistered copyright) is not registered anywhere, your best strategy for securing removal of infringing products will usually be to register it first and then seek removal, rather than to seek removal first.

Your best strategy is always to first register your IP and then pursue the protections a registered-status provides.

But what should you do if your copyright is unregistered?

Since 2019, Alibaba has consolidated AliProtect and its other IP protection platforms into a single platform called Alibaba Intellectual Property Protection Platform (IPP Platform).

Though registering your copyright is a clearer way to prove ownership, the IPP Platform does permit takedowns based on unregistered copyrights and the international IP lawyers at my law firm have had success recently in doing this for our clients.

Proving ownership of the copyright is done by filing a Copyright Claim Statement through the IPP Platform. This process typically takes longer than if the copyright was registered with a representation of the work.

The requirements for successfully filing a Copyright Claim Statement through Alibaba’s IPP Platform are as follows:

1. You must attest that specific links contain your copyrighted work and that your copyright is being used without your consent.

2. Your name.

3. Name of creator and if you are not the creator, proof of ownership reassignment by the creator to you is required.

4. Date, time and place of creation.

5. The method of creation: by photographing, by programming, by recording, etc.

6. Date of first publication.

7. Evidence of first publication, such as the exact location of the copyrighted work from an official website/catalogue., etc.

8. A description of the copyrighted work’s major characteristics.

Within a registered account on the IPP Platform, we then submit the Copyright Claim Statement for Alibaba’s review. The review period for an unregistered copyright is typically taking around three business days if all required information has been submitted. As we have learned from companies that tried to do this themselves, if you fail to properly submit everything, your copyright takedown request often goes into a purgatory before you are told that your request has been denied. If your copyright ownership has been successfully established, you will receive the following email:

尊敬的XX, 您好: 欢迎您使用阿里巴巴集团知识产权保护平台。 您在本平台提交的知识产权XX著作权权属证明已审核通过 请登陆http://ipp.alibabagroup.com查看并进行其它操作。 感谢您对阿里巴巴集团知识产权保护工作的关注和参与! 阿里巴巴集团知识产权保护团队 Dear XX, Welcome to Alibaba Intellectual Property Protection Platform. Your submitted proof of intellectual property right XX著作权 has been successfully authenticated. Please log in http://ipp.alibabagroup.com to view and proceed with further action. Thank you for your attention to and participation in our intellectual property protection. Alibaba Intellectual Property Protection Team

Now that your ownership of your unregistered copyrighted work has been established by Alibaba, you can submit claims for each infringing item within the IPP Platform. Infringing items are identified by providing individual hyperlinks to each page where the items are being offered for sale on any of Alibaba’s portals: Alibaba.com, Tabao.com, Tmall.com, Tmall Global, 1688.com, AliExpress, and Lazada.

If offending links match your IP, Alibaba will quickly take them down. The offending seller then has three days (if it is its first offense) or thirty days (for any other offenses) to respond to the takedown by submitting a counter-notification. A counter-notification is the seller claiming that it in fact owns the copyright and must prove so by the same standard of proof of any copyright owner. If the offending seller fails to respond to your takedown request it loses its right to submit this counter-notification, the case will be closed and the seller will not be allowed to advertise the offending products for sale on the site.

Bottom Line: Though it is faster, better and easier to take down an offending product from Alibaba if you have a registered copyright, it is possible to do so without one.