Policy

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Basic Guide to DRS

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Experts

A graduate in law from Magdalen College, Oxford, Dawn Osborne joined Willoughby & Partners in November 1996 having trained and qualified with the media and intellectual property practice of Denton Hall. She became a partner of Willoughby & Partners and an executive of Rouse & Co International in January 2000.

Dawn specialises in Internet law/e-commerce and was recently named as a highly recommended individual for E Commerce and Internet law in the Global Counsel 3000 directory. She regularly advises businesses in relation to the content or hosting of web sites, the use of brands/IPR on the Net and the protection and enforcement of IPR in cyberspace including notice and takedown. She had conduct of the defence in the pitman.co.uk case, which W&P handled successfully for Pearson Professional Limited (trading as Pitman Publishing), and was also involved in the prince.com case where W&P retained the domain name for its UK client in the face of an attack from a US business of the same name. She is also regularly involved in the recovery of domain names for clients and has been involved in a number of successful applications to the Court and ICANN disputes in this regard. She is an arbitrator for the WIPO ICANN and Nominet domain name dispute resolution processes, a co-opted member of the international committee of the Chartered Institute of Arbitrators due to her expertise in on line alternative dispute resolution procedure and is a member of the ADR Committee for the International Trade Mark Association and the Internet Committee for the Society for Computers and Law. Dawn has published over 40 articles in the area of Internet law and is a regular speaker on Internet related issues.

She has been interviewed and filmed for broadcasts in relation to successful litigation she has handled and Internet related issues and is regularly asked for comments by the press on these issues.

Dawn also handles general intellectual property work for film, publishing companies and entertainment clients and a large number of luxury goods companies. She is an Arbitrator for the new Musicians Union On Line Dispute Resolution Procedure administered by the Chartered Institute of Arbitrators. Recent litigation successes including successful revocation of a design on behalf of a major film company whose science fiction costumes had been copied and registered by a third party, successfully defending David Van Day formerly of the pop group Dollar against an application for an injunction against use of the name Bucks Fizz by former fellow band member Bobby G, successful defence at trial of Impact Executives against passing off litigation brought by Impact Plus and success for Montblanc at the interlocutory stage and then permanently at trial in injuncting the sale of a look-a-like pen which imitated the famous Montblanc white star device, and obtaining a judicial determination that this device mark was well-known.

Detailed Experience

• Domain name disputes including the Pitman and Prince cases (keeping domain names for legitimate users); obtaining ex-parte injunctions against domain name cyber-squatters e.g. montblanc.co.uk; obtaining names back for clients through ICANN proceedings or negotiation.
   
• Advice and litigation relating to new technologies i.e. where content from Internet is reproduced without consent on CD-Rom and is given away with magazines; the taking of names and addresses without license from databases; recolourisation of animation by computer means; major sporting organisation taking action to prevent its emblems, posters and trophies being reproduced in a multimedia game.
   
• Advice and litigation relation to the Internet i.e. advice on jurisdiction; infringement of rights in content; injunctions or service provider take down where brand names connected to undesirable content and service provider liability for chat rooms.
   
• Copyright and trade mark litigation for entertainment, toy, software, film and publishing companies including, for example, recent litigation and alternative dispute resolution of a dispute between a major and its ex licensee over copyright and designs in costumes from a world famous television series and litigation over the copyright in the script of a major film;
   
• Anti-counterfeiting campaigns i.e. in relation to a major film, literary and artistic works of a famous author, cartoon characters, childrens' television characters and major sporting events involving copyright, trade mark and passing off advice and many infringement actions and cooperation with trading standards government administrative bodies in relation to seizures.
   
• Copyright disputes in relation to a wide variety of types of works including work with an international element i.e. advice to UK users of foreign works (for example when the US and Russia acceded to Berne) and advice as to fair dealing in the context of clips of the Olympics
   
• Personality rights advice i.e. to an American producer who wanted to stage a musical about a famous American singer in the UK.
   
• Advice re enforcement of trade mark rights relating to names of bands including, for example, disputes between former members of bands e.g. reported case successfully defending David Van Day formerly of Dollar against an application from injunction against use of the name Bucks Fizz by former fellow band member Bobby G and UK advice as part of a worldwide enforcement campaign for one of the biggest girl bands ever
   
• Trade mark disputes i.e. advice to film companies and publishers who find that existing trade marks interfere with their merchandising plans.
   
• Advice relating to Copyright Tribunal matters re payments to collecting societies
   
• Passing off actions i.e. on behalf of publishers and film companies who find others using their names or titles for profit.
   
• Advice in relation to breach of confidence i.e. where an idea for a book has been stolen.
   
• Advice in relation to registration of a deceased famous author's name as a trade mark for books and similar advice in relation to registration of famous chess player's initials.
   
• Litigation on behalf of a satellite television company relating to clauses in a transponder lease agreement.
   
• Advice on creation, registration, protection, duration, use, licensing and merchandising of soft intellectual property rights across a wide variety of industry sectors.
   
• Conduct of the Montblanc v Sepia case, successful at trial for Montblanc in an action for trade mark infringement and passing off. Also obtained a judgement that the Montblanc White Star logo was well known.
   
• Involved in the Penguin / Puffin trade mark / passing off litigation from discovery through to trial. As a result of the Penguin / Puffin litigation, Willoughby & Partners won the Legal Business Award for the best intellectual property / information technology firm of the year.
   
• Involved in the collation of evidence for the Swiss Chalet geographical indications case including giving evidence at trial.
   
• Advice on preventing parallel imports following recent ECJ and UK case law.
   
• Advice and preparation of oppositions / evidence in relation to UK trade mark registrations and oppositions; Community Trade Mark oppositions.

And previous commercial experience includes:

• General contractual work in the entertainment and publishing field.
   
• Film production and financing non contentious work, including examination of chain of title documentation etc..
   
• Due diligence of recording and publishing contracts in relation to large scale acquisition of major international record company by another.

Interests

• Art - member of the National Arts Collections Fund and the Institute of Contemporary Art, Friend of the Royal Academy and the Tate.
   
• History - member of English Heritage and Friends of the V&A.
   
• Costume History - member of the Medieval Dress and Textile Society and The Costume Society.