What are the top three skills necessary to succeed in your role?
The ability to adapt, decision making and humility. If I could add a fourth, I would say that it helps to be curious and to have a love of learning, in order to best keep up with the constant changes in this area of the law.
What are the biggest challenges that you face protecting Rotary International’s intellectual property and how do you overcome these?
Rotary is a membership organisation and our driving force is our volunteers. They are focused on doing good in the world and are not always aware of Rotary’s brand guidelines, so education is vital. Once members understand why and how the guidelines strengthen the brand, and the part that they can play in this effort, they become brand advocates. Another challenge is that ‘rotary’ is a dictionary word. Sorting out true infringers from those with whom coexistence is possible is an evolving area.
Before joining Rotary you worked in private practice at various firms in Chicago. How do you manage budgets and resources differently in-house at a non-profit, compared to previous environments?
No matter what type of company you work for, managing money is important. While every company is conscious of how its money is spent, we are conscious at a different level because the money to run the administrative functions of the corporation comes largely from the dues of volunteers. Money not spent judiciously is money that could be spent doing good in the world. I also represent the Rotary Foundation, which is our charitable arm, so there is always an underlying thought that says this money could be better spent on polio vaccine, clean water and sanitation, literacy or any number of things. It makes you think differently about waste.
You have held leading roles in various IP associations. What part can these organisations play in the professional development of practitioners and on a wider societal level?
I have been fortunate to have leadership roles on the board of directors level at some IP associations and on
the advisory board of a law school. My employer sees the value in this and has been very supportive of my involvement. Participation gives you a voice and your company a seat at the table. As a brand owner, and in Rotary’s case, a global brand owner, that is important. I bring not just the global perspective but often the non-profit perspective to the various boards on which I have been privileged to sit. These groups are shaping IP practice and, in the case of the law school, future lawyers. This type of participation also gives you access – access to leaders in the field and to people working at the cutting edge of developing areas of IP law, with the ability to weigh in on how some of those laws could develop.
With access to this incredible network, you will build your own network, which will serve you and your company now and in the future. Through that, I am able to reach out to expertise all around the world.
How do you expect your IP practice to change in the next few years, especially in light of global events?
I think people’s emphases will change and the focus will shift away from some traditional consumer brands. Visibility will be more important than ever but the ways in which we achieve that will change. Building brand loyalty will hinge on new factors. People are increasingly concerned with not just how a product looks but also what the company behind it stands for. Because Rotary is a humanitarian services organisation and not a consumer product company, our brand’s perception will continue to depend on the work being done by our volunteers in the field. Where Rotarians can help effect change for the better, the brand will continue to be well known and our image will remain positive. While these efforts are certainly more difficult during a pandemic, our volunteers are adapting in order to continue to provide humanitarian services to communities in need. For as long as the pandemic continues without a vaccine and social distancing remains our best preventative measure, travel will be challenging and reaching people will be difficult. But adversity begets change and our members are resourceful and innovative and are finding ways to continue to help because that is who we are as a brand.
Jomarie B Fredericks
Deputy General Counsel, Chief IP Counsel
Jomarie B Fredericks is deputy general counsel and chief IP counsel for Rotary International, the association of 35,000 Rotary clubs and the Rotary Foundation, with a presence in more than 200 countries and territories. Her practice includes international trademark, copyright, licensing and corporate law. Ms Fredericks received a bachelor’s in speech communications and a master’s in journalism from the University of Illinois at Urbana-Champaign, her JD from the Illinois Institute of Technology Chicago-Kent College of Law and an LLM in intellectual property from the University of Illinois at Chicago John Marshall Law School.