wmcgrath@davismcgrath.com
(312) 332-4748


Bill McGrath has practiced intellectual property and business law since 1976. He is nationally recognized for his work in the field of 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.

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Chicago Daily Law Bulletin Articles
  • "Hall of Fame Cybersquatters End Up in Federal Court." (Jan 2011).
  • "Meet John Doe - Copyright Defendant." (Dec 2010).
  • "Regulation of Behavioral Advertising on the Internet." (Nov 2010).
  • "The Copyright Legacy of Learned Hand." (Oct 2010).
  • "Jury Awards of Statutory Damages." (Sept 2010).
  • "Trademark Dilution and Unicorns." (Aug 2010).

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Articles
  • "Copyright Subject Matter and Exclusive Rights" and "Copyright Infringement, Fair Use, and Remedies." Intellectual Property Law. (IICLE 2008).
  • Annual updates on U.S. copyright law sections. 2009 - present. World Copyright Law. J.A.L. Sterling, editor. (Sweet & Maxwell 2008).
  • Annual updates for U.S. Copyright law units. 2005 - present. Postgraduate Diploma Course Handbook. (King's College, London.) Co-author with Professor Adrian Sterling.
  • "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.

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Presentations
  • "Regulatory and Self-Regulatory Regimes for Social Media." Law Seminars International Conference on Social Media. Nov 2010.
  • "New Cases in Copyright Litigation." Practicing Law Institute. June, 2010.
  • "Using Other People's Materials - Copyright and Trademark Fair Use and Nominative Use." Law Bulletin Conference on Corporate Intellectual Property. May 2010.
  • "U.S. Perspectives on Moral Rights." U. K. Strategic Advisory Board for Intellectual Property, London, England. Mar 2010.
  • Developments in Copyright Litigation." Chicago Bar Association. Oct 2009.
  • "New Cases in Copyright Litigation." Practicing Law Institute. Jun 2009.

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