John M. Benjamin

Partner

  • John M. Benjamin
  • Phone: +44 20 7786 2145

    Import to Address Book

  • Duane Morris
    Citypoint, 16th Floor
    One Ropemaker Street
    London, UK EC2Y 9AW

John Benjamin is a co-chair of the Duane Morris Technology, Media and Telecom industry group, which includes privacy, artificial intelligence, machine learning and emerging technologies. He is a member of the firm's governing Partners Board. Mr. Benjamin’s practice focuses on intellectual property, technology and privacy law, dealing with both transactional matters and litigation. His client base includes leading global financial institutions and pharmaceutical companies, as well as social media, consumer electronics, data analytic organisations, gaming companies and FTSE 100 and Fortune 500 companies. Mr Benjamin has a great deal of experience in advising client’s on the legal complexities surrounding the roll out of new technologies globally and particularly in the UK and Europe. His experience extends to advising on novel technologies that push the boundaries of legal and regulatory requirements. He has a keen interest in advising on the exploitation of data through the use of artificial intelligence tools. Mr. Benjamin has extensive experience in privacy matters, including the General Data Protection Regulation (GDPR). He advises companies on claims following data breaches and on complex cross-border issues dealing with exporting personal data in connection with regulatory investigations. He has managed cross-border litigation for clients in a number of jurisdictions globally on intellectual property, technology and privacy law matters.

Mr. Benjamin earned an LL.B. (Hons) in Law and an LL.M. in IP Law from Queen Mary and Westfield College.

Areas of Practice

  • Intellectual Property Law

  • Data Protection and Information Law

  • GDPR

  • Technology Law

Representative Matters

    Technology and Intellectual Property Matters

  • Represented Moody’s Corporation (NYSE: MCO) in its acquisition via its Belgian subsidiary, Bureau Van Dijk Editions Electroniques SRL, of Vadis Technologies SA, a Belgian entity. Moody’s is a global risk assessment firm that empowers organizations to make better decisions by providing data, analytical solutions and insights to help decision-makers identify opportunities and manage risks. Vadis Technologies is a fintech company that developed software to detect certain types of potential fraud and other wrongdoing used by the European Commission; the technology is used generally by EU member states for electronic fund transfers.

  • Represented one of Europe’s leading businesses in the packaging sector in the acquisition of a leading UK pharmaceutical and food packaging manufacturer and its subsidiary.

  • Represented SEACOR Holdings Inc. (NYSE: CKH), a marine services public company, in connection with its subsidiary’s acquisition of two companies based in London and two companies based in Singapore, all of which are engaged in vessel response, crisis communication, and public relations services for the global maritime industry.

  • Represented an Asia-based global consumer electronics company in a major dispute with a third party vendor over the supply of components.

  • Advised a Silicon Valley-based global technology company on the rollout of its new technology in Europe.

  • Advised a North American chemical company on various licensing and manufacturing agreements relating to the use of gas as part of a medical product.

  • Advised Centurycomm Limited (Racing Post) in its dispute with the British Horseracing Authority and Racing Enterprises Limited involving the use of prerace data, including a claim in IPEC for declaratory relief and a reference to the Copyright Tribunal.

  • Defended a large resort-hotel group in connection with a cross-border claim brought by a well-known photographer.

  • Defended a large Korean conglomerate in a dispute involving the use of wind turbine technology.

  • Advised Sony on its $1.9 billion acquisition of EMI Music Publishing and on its formation of a joint venture in the Now That’s What I Call Music! business.

  • Advised Sony Music Entertainment in a copyright dispute relating to its purchase of EMI Records.

  • Advised Badoo in a trademark infringement dispute in Russia.

  • Advised Afrimax on a trademark license of the Vodafone brand and its use in a number of sub-Saharan countries.

  • Represented Google in connection with a patent claim in the UK High Court.

  • Advised Bank of Tokyo-Mitsubishi UFJ, Ltd, Sumitomo Mitsui Banking Corporation and Mizuho Bank, Ltd, on a 1.28 billion euro refinancing and led the negotiation of the intellectual property aspects of various security documents.

  • Advised Sunseeker Yacht Holdings on its £320 million sale to Dalian Wanda Group, managing the IP and IT aspects of the deal.

  • Advised Vestel on its acquisition of Sharp’s European white goods business.

  • Advised the Industrial and Commercial Bank of China Limited (ICBC) on its approximately $770 million acquisition of a majority stake in Standard Bank, negotiating the intellectual property and information technology aspects of the deal.

  • Advised Iconix Brand Group on the intellectual property aspects of its acquisition of Red Diamond Holdings, owner of the British denim label Lee Cooper, from an affiliate of Sun Capital Partners.

  • Advised BC Partners on the acquisition of Spotless Group and the acquisition of Sara Lee’s European insecticide business, drafting manufacturing agreements.

  • Advised Clyde Bowers Capital in the reorganization of its Moventas gearbox business relating to power plants, splitting assets and drafting know-how licenses.

  • Advised OCP Asia, an alternative investment fund manager, on the proposed securitization of DQ’s entertainment catalogue of animation works; this was one of the first securitizations of a large copyrighted portfolio in India.

  • Advised an Asian conglomerate on IP issues, and coordinated the negotiation and rollout of a 4G network in India.

  • Advised Deutsche Bank on numerous IT contracts, including the outsourcing of various services.

  • Advised Dish Network on the administration of Blockbuster’s business in the United Kingdom, and on its sale to Gordon Brothers.

  • Represented Samsung, implementing a pan-European selective distribution system for televisions and printers.

  • Advised one of the world’s largest toy manufacturers on its IP strategy in China, which resulted in the reduction of counterfeit products.

  • Advised one of the UK’s leading insurers on the rationalization of their existing IT supplier.

  • Advised a UK-based technology company on litigation surrounding agile development agreement.

    • Privacy Matters

  • Advised a global investment bank on the implementation of its GDPR programme.

  • Dealt with numerous high profile data breaches both in the UK and across the globe. Advised boards of major corporations on how to deal with the aftermath and dealing with regulators.

  • Advised numerous companies around the world on the steps that need to be taken to implement a successful GDPR programme.

  • Advised one of the UK’s largest insurance companies on the rollout of algorithmic solutions to monitor customer behaviours.

  • Advised a large U.S.-based education institution on the impact of GDPR to its day-to-day business.

  • Advised a major Silicon Valley-based technology company on compliance with the GDPR and ePrivacy Directive.

  • Advised a global technology company on compliance with marketing laws around the world and providing strategic advice regarding opt-in strategy.

  • Defended EMCOR in relation to a class action dispute involving the construction industry with over 300 claimants.

  • Advised a UK-based supermarket on implementation of no-till supermarket. Advising on DPIA and agreement with technology provider.

  • Advised a large U.S.-based hotel group on its employee-facing and customer-facing GDPR compliance strategy.

  • Advised a large UK-based insurer on its integration with the Alexa-based platform.

  • Advised a UK-based company on contested subject access request.

  • Provided numerous training-based initiatives to different companies.

  • Advised a large UK-based charity on how it can enhance its privacy policy and marketing strategy through evidence-based research.

  • Provided advice regarding transfer of data in connection with U.S. Department of Justice investigations following the LIBOR investigations.

Admissions

  • England and Wales
  • Northern Ireland (non-practising)
  • Ireland (non-practising)
  • Dutch Brussels Bar – B List (Brexit Section)

Education

  • Queen Mary and Westfield College, LL.M., IP Law, 1997
  • The College of Law of England and Wales, L.P.C., 1996
  • Queen Mary and Westfield College, LL.B., 1995

Experience

  • Duane Morris
    - Partner, 2019-present

  • DWF LLP
    - Partner, 2015-2019

  • White & Case
    - Counsel, 2011-2015

  • Eversheds
    - Associate, 2004-2011

  • GSC Solicitors
    - Trainee and Assistant, 1997-2004

Professional Activities

  • Society for Computers and the Law

Selected Publications

Selected Speaking Engagements

  • Speaker, "Get Smart with AI: Practical Impacts of the New EU AI Act," Duane Morris LLP Webinar, May 16, 2024
  • Presenter, "The Data Privacy and Security Landscape: International Developments in Privacy," Duane Morris Webinar, January 17, 2024
  • Speaker, "Get Smart with AI: Best Practices for Using AI in Business," Duane Morris Webinar, October 17, 2023
  • Presenter, "The Data Privacy and Security Landscape: Privacy Issues in AI," Duane Morris Webinar, September 14, 2023
  • Speaker, "Matisse or the Matrix – The Future of Generative Art and AI," Duane Morris Webinar, April 17, 2023
  • Presenter, "Privacy Issues in Cross-Border Litigation," Duane Morris Data Privacy and Security Landscape: Legal Developments in the United States and Beyond Webinar Series, June 30, 2021

  • Co-presenter, "Preparing for the CCPA: Lessons Learned from the GDPR," The California Consumer Privacy Act of 2018 Webinar Series, September 16, 2019

  • "Dealing with Mass Claims under Privacy Laws," Privacy Law & Business, St. John’s College, University of Cambridge, 2018

  • GDPR Talk at the DFIC, Lexis Nexis, 2018

  • "Data Philanthropy," Privacy Law & Business, St. John’s College, University of Cambridge, 2017