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Starting 29 September 2021
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William McGrath
Attorney at Davis McGrath LLC and John Marshall Law School, Chicago

Profile

Bill McGrath has practiced intellectual property and business law since 1976. He is nationally recognized as an expert on copyright law, though his areas of concentration also extend to trademark and information technology law, as well as publishing law, trade secret law, and software licensing. Bill's experience includes counseling, litigation, arbitration, and mediation. He has litigated matters at each level of the federal courts, including the U.S. Supreme Court. He has also litigated matters before the Trademark Trial and Appeal Board. Bill has taught graduate courses in Copyright Law and Copyright Litigation since 1990 at The John Marshall Law School, where he serves as Associate Director of the Center for Intellectual Property Law. He is the author of numerous articles, including more than a dozen articles for the IP Litigator, and has provided feature content for journals including the National Law Journal and Corporate Legal Times (now Inside Counsel). He is author of two chapters on copyright law in the treatise Intellectual Property Law (IICLE 2008). Bill also lectures extensively on copyright law. Bill is Past President of the Intellectual Property Law Association of Chicago, and has served as Chair of the Patent, Trademark & Copyright Committee of the Chicago Bar Association. He has also served on the Board of Trustees of the Copyright Society of the USA, and is currently a member of the Editorial Board of the Journal of the Copyright Society of the U.S.A. He has been named to the "Illinois Leading Lawyers" network and has been recognized as an "Illinois Super Lawyer" by the publishers of Chicago Magazine.

Education:

J.D., Washington University, 1976
B.A., University of Notre Dame, 1973

Bar Admissions:

  • State of Illinois (1976)
  • U.S. District Court for the Northern District of Illinois (1976) (Trial Bar, 1983)
  • U.S. Court of Appeals for the Seventh Circuit (1981)
  • U.S. Court of Appeals for the Federal Circuit (1982)
  • United States Supreme Court (1983)

Professional Activities:

  • Member, Editorial Board, Journal of the Copyright Society of the U.S.A.
  • Member, Editorial Board, ABA IP MagazineLandslide
  • Member, Copyright Society of the U.S.A. (Board of Trustees, 1999-2001)
  • Intellectual Property Law Association of Chicago (President, 1999- 2000)
  • Lawyers for the Creative Arts (Board Member, 1996-1998)
  • Chicago Bar Association (Chair, Patent, Trademark and Copyright Committee, 1992-1993)
  • NITA Trial Advocacy Program (1984)

Reported Cases and Representative Matters:

  • Silkwood vs. Kerr-McGee Corp., 464 U.S. 238 (1984). One of the team of attorneys that represented defendant in a matter involving the scope of preemption under the Atomic Energy Act.
  • In re Amsted Industries, Inc., 972 F.2d 1326 (Fed. Cir. 1992). Represented Amsted Industries in an appeal of a Trademark Trial and Appeal Board (TTAB) ruling refusing to register a solid color trademark for thermoplastic encapsulated wire rope. Obtained the registration after the successful appeal.
  • Roulo vs. Russ Berrie & Co., 886 F.2d 931 (7th Cir. 1989). Co-counsel for plaintiff in the trial and appeal of a case involving copyright and trade dress infringement of greeting card designs. The case resulted in a $4.3 million verdict for plaintiff.
  • Hot Samba, Inc. vs. Caterpillar, Inc., 2004 WL 609797 (N.D.Ill. 2004). Represented plaintiff in claim of copyright infringement and trade secret misappropriation relating to an e-commerce software program. After a four week trial, the jury found in favor of the plaintiff on both claims, awarding compensatory and punitive damages.
  • Storm Impact, Inc. vs. Software of the Month Club, 13 F.Supp.2d 782 (N.D.Ill. 1998). Represented plaintiff in a copyright infringement trial involving unauthorized use of computer shareware. The case resulted in an award of statutory damages and attorney's fees to plaintiff.
  • Pioneer, Inc. vs. Hitachi High Technologies America, Inc., 74 U.S.P.Q.2d 1672 (2005). Represented Hitachi in a TTAB Opposition Proceeding concerning registration of a mark for video and audio products.
  • Nightingale vs. Nightingale-Conant Corporation. Co-counsel for the publisher in an arbitration matter relating to copyright ownership and royalty claims on the entire body of works of radio personality and author Earl Nightingale.
  • Natkin vs. Winfrey, 111 F.Supp.2d 1003 (N.D.Ill. 2000). Filed a report as an expert witness for plaintiff in copyright infringement case dealing with issues of work-made-for-hire and joint authorship of photographs of Oprah Winfrey show.

Articles:

  • "Film Clips and Fair Use: The King is Dead But His Copyrights Live On" IP Litigator 10.2 (Mar 2004): 31.
  • "Thin-Skinned Barbie Meets the Fair Use Doctrine" IP Litigator, 9.5 (July 2003): 37.
  • "Revenge of the Troll Dolls: Copyright Restoration for Foreign Works." IP Litigator, 8.8 (Sept 2002): 23.
  • "Answered Prayers and Jury Trials: Mr. Feltner's Lesson." IP Litigator, 8.2 (Feb 2002): 24.
  • "The Night I Learned The Essence of Copyright." CBA Record, 12.2 (Feb 1998)
  • "Copyright and the Public Domain." National Law Journal, May 8, 1995, C23.
  • "Do You Own The Copyright In Your Customized Software?" Corporate Legal Times. March, 1992.

    Presentations
  • "New Cases in Copyright Litigation." Presented to the Practicing Law Institute. June, 2007.
  • "Legal Aspects of Self-Publishing." Presented to Chicago Women in Publishing. March, 2007.
  • "Copyright Protection and Fair Use of Online Content." Presented at the Law Bulletin Corporate Intellectual Property Law Conference. March, 2006.
  • "That's Mine and I Can Prove It! The Evidentiary Aspects of Intellectual Property Litigation." Presented to the Chicago Bar Association. February, 2005.
  • "The Fair Use Doctrine in U.S. Copyright Law." Presented to the Intellectual Property Law Association of Brazil (ABPI) in Rio de Janeiro. August, 2002.
  • "Music and the Internet: The Napster Litigation." Presented to the Chicago Bar Association. September, 2000.