Position Title: Legal Committee Trademark Specialist

Organization name: Organization for Transformative Works

Committee: Legal

Reports to: Legal Committee Chair

Time Requirements: Varies; usually under 2 hours/week but can have periods of intense activity

Term: 1+ years

Role Overview: The Legal Committee has both outward-facing and inward-facing responsibilities (as detailed below). The trademark specialist may choose to participate in non-trademark-related work, but need not do so.

The trademark specialist will be responsible for (1) trademark registration applications and maintenance and (2) trademark enforcement, generally dealing with platforms and attempts to monetize AO3 via apps or merchandise. These attempts vary in their good faith and therefore a priority of the role is effective communication with nonlawyers.

Committee Overview:

• Outward-facing: The Legal Committee’s role includes both advocacy and education. For example, Legal members provide general assistance and information in response to outside inquiries from fans, including inquiries about fair use and responding to take-down notices; and provide general information in response to inquiries from the press; and informational and educational content regarding legal developments that may impact fandom. The Legal Committee’s advocacy role also includes writing legal briefs and participating in lawmaking activities such as writing formal submissions to lawmaking bodies and testifying before lawmakers.
• Inward-facing: The Legal Committee is responsible for giving confidential advice within the organization on a wide variety of legal topics. This includes assisting AO3 Policy & Abuse, AO3 Support, and Fanlore to resolve user issues; assisting the Board and Volunteers & Recruiting Committee with issues of personnel law; assisting the Board, Finance Committee, and other committees and workgroups with issues regarding organizational governance and nonprofit law; and assisting Open Doors, Systems, and other committees and workgroups with legal aspects of their planning.

Date of position description review: Annual

Key Responsibilities:

• Prepare and submit trademark registration renewals, applications, and correspondence with trademark registries, and keep track of deadlines relating thereto
• Respond to inquiries from inside and outside the organization reporting potential trademark infringements
• Engage in enforcement activities where necessary, primarily filing takedown notices with platforms; filing UDRP/URS challenges; engaging with potential infringers; and providing guidelines where another entity seeks to use the AO3 marks (including non-objection responses where the use is clearly fair/nonconfusing)
• Work on occasional larger-scale projects such as amicus briefs relating to trademark
• Proactively bring potential issues to the whole committee’s attention
• Welcome questions so that people within the organization recognize that Legal would always rather be asked than not asked, and concomitantly respond as quickly as possible so that work is not hindered

Experience:

• Legal experience, usually a JD, is required. Law students will be considered under appropriate circumstances, but those with JD degrees (or equivalent) are strongly preferred. Most work is US-based, but we are interested in increasing our non-US knowledge, and particularly interested in EU trademark filing experience.

Skills and Attributes:

• Excellent communication skills, including ability to communicate legal issues to nonlawyers
• Ability to help decision-makers decide which risks are worth taking
• Ability and willingness to maintain confidentiality and legal privilege
• Responsiveness to inquiries
• Familiarity with trademark law

Training Requirements:

• Be open to mentoring, coaching, and/or instructing other committee members and/or volunteers on other committees in specific areas of the law if requested or needed
• Be open to being mentored or coached if other members have knowledge or experience to share