Don’t settle, be nimble

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During the recent International Trademark Association (INTA) annual meeting held in Singapore, we spoke with Jomarie Fredericks, the 2023 INTA president, about future INTA events, her goals during her one-year tenure, and how she balances this role with her more permanent responsibilities as the deputy general counsel of Rotary International, a worldwide not-for-profit service organisation What were the main considerations behind choosing Singapore to host the event?

Jomarie Fredericks: I was not involved in the selection process. I may have sat on the board when it was approved, but research into which cities to go to was done many years in advance. Contracts are also signed years in advance.

We originally planned to come to Singapore in 2020, but then the pandemic happened, and no one was able to go anywhere. So, by the time the decision was made to come to Singapore in 2023, it was built on research that had been done to bring us here in 2020, years before anybody knew I was going to be president.

That being said, I am happy to be here. This is the second time that INTA has hosted a convention in Asia, the first time being in Hong Kong in 2014. I remember the Hong Kong event very well. I remember the rain, but also what a wonderful and vibrant city Hong Kong was. I took the public ferry across and back, and stayed adjacent to the convention centre.

It took us a long time to return to Asia, and we have had an incredible response. We have over 8,000 registrations this week. After being away for so long, and a number of other countries being closed for so long, to be back open with 8,000 is, we think, a great success.

The IP world is ready to come together, and Singapore makes for an appealing destination on many levels. It is an IP-rich region of the world. The investment in and outpouring of innovation have exploded in recent years.

The Asia-Pacific is home to many emerging brands and small domestic markets with high internet penetration, who are looking to expand globally and need help with IP protection abroad. The growth of the middle class and the reopening of China have provided many opportunities for brand owners.

Registrants are now finally able to connect and exchange ideas, which has been on hold for too long. It was recently announced that the 2024 INTA Annual Meeting would be held in Atlanta, and the 2026 event in Dubai. What are your expectations for these cities?

Fredericks: It is the goal of INTA to go outside the US every three years, because we wish to have an international reach and embrace our international members. By bringing the annual meeting to the backyard of our members in the region, it makes for a richer convention and better exchange of ideas.

We have hosted annual meetings in Atlanta before. The city is much more developed and improved since then, with better facilities and a revitalised downtown. Those who remember the last time in Atlanta will be favourably surprised.

One of the reasons we selected Atlanta, as well as Houston for our upcoming leadership meeting, is that during the pandemic when everything shut down and we realised that we could not go to Singapore, we considered doing a scaled-down meeting in the US. Both Atlanta and Houston were very helpful and co-operative in helping us potentially plan a short-notice annual meeting.

In the end, we were unable to go to either city, but we knew they were co-operative, and the negotiations were successful. So, we wanted to go back to these cities at our earliest opportunities, being our way to reciprocate their positive responses.

We do not usually announce the host city more than one year in advance, but we are so excited about Dubai. It is the first time that INTA is holding an annual meeting in the Middle East. We thought that, as it will be our next international venue, we could use the Singapore event as an excuse to announce Dubai. We were too excited to keep it in.

Dubai is like Singapore in many ways. The business community will find it very accessible, with English as a universal language. The fact that we can have a presence there makes our membership very excited. As the president of INTA for 2023, what are the biggest goals that you aim to achieve during your tenure?

Fredericks: The biggest things that I work on as president are accomplished through my presidential task force. Each president may establish such a presidential task force to handle important issues. Not every president does so, but most do.

My task force is called Unlocking IP, and we focus on raising public awareness, and increasing visibility and understanding of IP through the media. Media is our first line of contact to the public, but media is broader than it used to be.

Those who cover IP, like you, would know IP, but most journalists are not necessarily IP specialists. They work on perhaps five to seven stories per day, all on different topics, and it is impossible to be an expert on everything.

So, we would like to provide some tools that make it easier for the media to communicate about IP, and in doing so, hope that the coverage about IP may increase not just in volume, but also in quality and accuracy. Thus, we raise awareness by letting the public read stories about IP that they can more closely relate to. What are INTA’s plans to help companies navigate a new IP landscape being transformed by disruptive new technologies such as AI?

Fredericks: It is something new and developing. Everybody seems to be riding the wave as it starts to happen. It is a little terrifying, but on the other hand also exciting. We look at it as an opportunity, to be at the forefront and hopefully help shape the laws in the area.

Generative AI, such as ChatGPT which is getting most of the press today, presents specific IP challenges. By 2025, 10% of all data produced globally will be contributed from generative AI. The global generative AI market size accounted for USD7.9 billion in 2021 and is projected to occupy a market size of USD110.8 billion by 2030.

Generative AI is based on its uses, and at this point receives no permission for the use of, in many cases, trademark, brand or patent-protected content. So, who owns the outcome or product when IP-protected content is used to generate it? That is the million-dollar question.

The infringement and rights of use issues, uncertainty about ownership, uncertainties about unlicensed content and training data make for some interesting, and as yet largely unanswered, legal questions. Take for example the Andersen v Stability AI, et al (2022) case – three artists formed a class to sue multiple generative AI platforms for using their original work to train bots in their styles.

What is a derivative work under IP laws? Where does fair use end? These are questions that will be studied intensively going forward. There has already been a lot of panels and discussions about AI among INTA’s membership. It is an exciting time to be in this field. As both the deputy general counsel of Rotary International and INTA president, how do you balance these roles and make them complement each other?

Fredericks: It is as you said – they complement each other. My work at Rotary International is supported by INTA, and my work with INTA very much benefits Rotary. It is a symbiotic relationship. I could never have had this level of involvement in INTA for the past 28 years without the support of my company.

When I first joined Rotary International in 1995, one of the first things I did was to have Rotary join INTA. As a global brand owner, I thought it was important that it had a seat at the table. INTA is at the forefront of shaping laws that affect my company and others. It seems only sensible for Rotary to be a part of INTA, which in turn supports Rotary’s work and its valuable trademarks.

Rotary is not a consumer products company. It does not really sell anything beyond some souvenir T-shirts to our membership. We are known around the world for our marks and brand, for the volunteer work that our people do in the field.

The branding serves as an entrée to get our members accepted into a local community, gives them access to the people in the community, so they can provide polio vaccine to the children, teach literacy, help with clean sanitation and build new wells. Rotarians do these things around the world unified under our branding, which is what INTA helps protect.

As to how I balance these roles, the simple answer is that I don’t sleep much. I have my full-time job at Rotary, and after more than 20 years of INTA involvement, my role at INTA has also increased, which takes up more of my time. I try to do some time shifting. You can’t control when a Zoom call, or telephone conference, will take place due to time zone differences, but I try to accommodate everyone around the world.

I am not unique in this way. Most of my colleagues with international practice are used to it. It is not a problem, but rather a privilege, and a unique experience that I wouldn’t trade. I have learned and grown much through my work at Rotary, meeting people at different Rotary Clubs, and the same can be said for INTA.

I am privileged to partake in the annual meeting in this beautiful city, then Atlanta next year and Dubai in 2026. It is worth taking a little extra time, and working some odd hours here and there. Many IP lawyers start their career outside the legal circle. How do their previous professional experiences come to benefit their IP practice?

Fredericks: I believe everything you do in your life builds on what you have done before, so every experience you bring to the table, whether in law or IP, or as an accountant, a friend, a family member or a student, comes together to make up you, which is what you bring to the next experience.

In my case, I worked in radio, television and a little journalism before I went to law school, which is a little later than some of my colleagues. With that background, I practised media law at a couple of law firms, which I enjoyed.

Rotary International is not a media company, but trademark and copyright protection are a big part of media law and broadcast law. I also practised libel and privacy law, which is a part of my practice that I miss. I knew I would miss it when I joined Rotary, but it was a trade. I was interested in working in-house, and Rotary gave me the opportunity to practise international law and manage my own department, both of which I had never done before.

I did not know at that time how long I would stay with Rotary, but it has been 28 years, and here I still am. Sometimes, you just don’t know what would be the best fit for you. Over the years, I have thought about changing jobs, but Rotary has remained the best fit for me.

People need to have goals, and my goal was to practise media or broadcast law, and eventually go in-house. I stuck to those goals, but I was also nimble and flexible. When the in-house opportunity came to me, I accepted that it emphasised the trademark and copyright side of the law, and less on libel.

This is the advice that I would like to give young practitioners, or at any age. Be true to yourself, be true to your goals, try not to settle for something you don’t really want. But on the other hand, be flexible enough to shift what you want to meet the opportunities that come your way.

I am lucky to have done that, or let myself do that, because look at all that it has brought me. I have a global practice, and I have helped protect the Rotary brand for almost 30 years. When I see Rotary’s volunteers in the field, wearing the marks and helping global communities, it gives me a sense of accomplishment and pride.

For me, it was the right way to pivot, and I encourage everyone to be open to these opportunities.

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