Job Title: Assistant General Counsel; Supervisor, Licensing
Area: Office of the General Counsel / Intellectual Property
Reports to: Deputy General Counsel (Intellectual Property)
Classification: Exempt
Location: Evanston, Illinois
This position is designated as Hybrid – Fixed Days and will regularly work in the office an average of 3+ days a week – with a set schedule. Managers may require team members to work on the same schedule to encourage collaboration. Rotary is under the jurisdiction of Illinois employment laws; we require all employees to live within reasonable daily commuting distance to Evanston.
Organization Overview
Rotary is a membership organization that unites people from all continents and cultures who take action to deliver real, long-term solutions to pressing issues facing our communities and the world. Each year, Rotary members expand their networks, build lasting relationships, and invest more than $300 million and 16 million volunteer hours to improve lives and create positive change in the world. In exchange for hard work and dedication in support of Rotary’s clubs, members and other participants, and their humanitarian service projects, our employees receive competitive salaries, flexible schedules, comprehensive benefits, and job enrichment. To learn more, visit http://www.rotary.org.
Rotary’s Commitment to Diversity
As a global network that strives to build a world where people unite and take action to create lasting change, Rotary values diversity and celebrates the contributions of people of all backgrounds, regardless of their age, ethnicity, race, color, abilities, religion, socioeconomic status, culture, sex, sexual orientation, and gender identity.
Overview
This position supports the Office of the General Counsel team, responsible for Intellectual Property protection at Rotary International. You will have the opportunity to help protect Rotary International’s global intellectual property portfolio and assist the Rotary International Board of Directors and The Rotary Foundation Board of Trustees to develop and implement policy in this area.
Supervise Rotary International’s Licensing function and oversee the day-to-day operations of Rotary International’s merchandise and membership software licensing systems and its approximately 160 Official Licensees and additional manufacturer licenses. Assist the Deputy General Counsel, Chief Intellectual Property and Brand Counsel in the policing and protection of Rotary International’s intellectual property on a global level, including the pursuit of pirates, registration of Rotary International’s trademarks, trademark clearance, infringement matters and domain name matters. Draft inbound and outbound asset license and work-for-hire agreements, and maintain and manage copyright, publicity and trademark templates. Work on other corporate legal matters, including reviewing and drafting contracts in the areas of privacy, communications, sponsorships, partnerships, cause marketing, and software. Advise on the application and implementation of policies concerning the intellectual property of the association. Participate in meetings of and present to, as necessary, Rotary International committees concerning licensing or other intellectual property issues.
You Will Have
Education
- Juris Doctor required. Licensed to practice law in the State of Illinois, or, if licensed in another jurisdiction, the ability to become licensed in Illinois.
- Licensed to practice law in Illinois, or, if licensed in another jurisdiction, the ability to become licensed in Illinois. Minimum 3 years prior practice of law – intellectual property and/or licensing specialty preferred. Some general corporate law and/or litigation and privacy experience preferred. Prior law firm experience preferred.
Software requirements
- Internet proficient, Microsoft Word, Microsoft Excel, Adobe, Adobe professional, Acrobat, DIAMS, various software applications, as necessary.
Soft skills
- Daily contact with club membership on all levels and senior staff, worldwide. Daily contact with club membership on all levels, especially at Senior Leader level, and outside counsel, worldwide.
- Highly detail oriented.
- Strong research, issue-spotting, problem-solving and analytical skills.
- Ability to handle a variety of assignments, multi-task, balance priorities, coordinate multiple, ongoing projects and meet regular deadlines.
- Self-motivated and the ability to take direction and work independently.
- Ability to adapt to a changing environment.
- Ability to work with cultural awareness.
- Position requires some travel, including international travel.
You Are Good At
- Written and oral communication
- Public speaking
- Showing attention to detail
- Intellectual Property Expert
- Licensing Expertise
- Privacy knowledge/expertise
You Will Be Responsible For
Intellectual Property/Licensing
- Develop and implement policies and procedures for Rotary International’s Licensing program, seeking approval from the Rotary International Board of Directors, as necessary;
- Supervise the Licensing Specialist on all aspects of licensing, including royalty collection, drafting and reviewing license agreements, applications, correspondence, and licenses/releases, and promoting the licensing system, for both the merchandise and membership software licensing systems;
- Assist with preparation of annual budget;
- Oversee licensing audits of Rotary International Licensees around the world;
- Assist the Deputy General Counsel with registering, policing and protecting Rotary International’s intellectual property throughout the world, including preparing trademark and copyright applications, amendments, use affidavits and renewals;
- Assist the Deputy General Counsel in monitoring and pursuing trademark infringers, including preparing evidences in support of worldwide pending oppositions, sending cease and desist letters, and overseeing outside counsel;
- Perform trademark clearance and draft risk assessments for new marks, including, annual presidential theme, annual convention logo and tagline, and new logos, word marks or taglines;
- Assist the Deputy General Counsel with intellectual property policy development, analysis and implementation;
- Facilitate domain name acquisitions and assignments in conjunction with IP Paralegal and work with the various Registrars to protect Rotary International’s trademark rights whenever a new TLD is approved;
- Educate other areas of the Secretariat, as necessary, on intellectual property law and association trademark policies;
- Work with other staff to establish training materials for trademark use and licensing and counsel staff on proper use of trademarks and brand;
- Work with the Communications area to advise on various projects, including: reviewing publications, films, products, campaigns, and advertising for IP rights and data privacy and drafting inbound and outbound license agreements and film, publication, music, photographer and talent agreements and releases;
- Work with Rotary International Committees and the Rotary International Board of Directors, including drafting Minutes, Advance Memoranda, and contracts and giving presentations, as necessary;
- Review contracts under the Contract Review Policy, including communications, software, vendor, finance and other general business agreements, and review relevant portions of contracts being reviewed by other attorneys for relevant intellectual property, technology, privacy, and related provisions;
- Draft and review vendor, software, developer, sponsorship, partnership and confidentiality agreements, and RFPs and advise on relationships concerning third parties, as well as sponsorship, cause marketing, and promotions;
- Draft exhibitor terms and conditions and speaker agreements, review attendee terms and entertainer contracts for annual meetings;
- Advise on promotions and draft promotions and contest rules;
- Support social media staff by drafting campaign rules, reviewing social media use and moderation policies, and reviewing user content;
- Counsel on data collection/use for various projects in consultation with the Data Privacy and Security Committee, and international privacy laws;
- Participate on internal staff teams, including product development teams, as necessary; and
- Identify and minimize risk through counseling staff and Boards on intellectual property and corporate law and collaborating to develop and modify practices and procedures to conform to current laws.
Supervisory Responsibility
- Position directly supervises the Licensing Specialist. Daily supervision of an advisory, legal analysis, work delegation and project implementation supervisory nature.
- While not a direct report, position gives regular guidance to Brand Specialist on policy and trademark related matters.
Budget Responsibility
- This position assists with preparation of the budget for the Intellectual Property cost center as well as income projections for licensing fees and royalty income.
Leadership Attributes
- Engagement: Foster relationships by hearing, recognizing, and valuing others.
- Communication: Be open to receiving ideas from diverse viewpoints and able to communicate messages so that they are universally understood.
- Collaboration: Builds partnerships and works jointly with others to meet shared objectives.
- Productivity: Able to generate results that moves Rotary toward achieving its goals.
- Accountability: Have a clear sense of ownership and take personal responsibility for actions.
Why work for Rotary?
- Generous medical, dental, and vision benefits package
- Progressive 401k matching contributions
- Above market and generous paid time off package
- Tuition reimbursement
- Professional development opportunities
- On-site cafeteria and coffee bar with special pricing for Rotary employees
- Flextime-several different work schedules to choose from
- Close to CTA, Metra, a variety of stores, and many food options
Please note:
- Rotary does not provide VISA sponsorship or relocation assistance.
