David C. Hilliard

David’s clients come to him looking for a lawyer who can provide sound, cost-effective advice, but who also can orchestrate a month-long trial, provide credibility and insight as an expert witness, or bring stubborn parties to a settlement as a mediator. David’s intellectual property cases have resulted in over 100 Federal Court opinions throughout the United States, including nine major jury trials, and he has argued appeals in all but one of the U.S. Courts of Appeal.

Intellectual Property LitigationOne of WTR 1000’s two Illinois “Luminaries” and a Chambers “Senior Statesmen,” David brings value through his wide experience as a trial lawyer in Intellectual Property matters of every description. He protects iconic brands like FORD, PEPSI, GENERAL MOTORS, JAGUAR, BASF, CHRYSLER, H&R BLOCK, NORTHERN TRUST, SUNLIFE OF CANADA and TIGER WOODS.

David is listed in The BEST LAWYERS IN AMERICA, has been recognized by The Legal 500 for his “longstanding track record of trial and appellate level matters” and by WTR 1000 as a respected expert witness. He is a Fellow, American College of Trial Lawyers and past Chair of the College’s Courageous Advocacy Committee.

David’s litigation highlights include:

• For Sun Life of Canada, establishing the principles of “doctrinal moorings” and “inevitable confusion” in U.S. District and Appellate Court trademark cases and introducing the first “mystery shopper” survey as an innovative means of assuring survey trustworthiness.
• For PepsiCo, launching more than seventy gray market goods cases that resulted in Federal Court opinions that helped define the standards for protection against gray market imports, and violations of the Tariff Act.
• As lead counsel for Ford Motor Company, winning major copyright cases in Asia, South America and the U.S. that shut down over fifty counterfeiters of Ford parts and helped establish many of the legal bases for anti-counterfeiting protection.
• For Jaguar Motor Cars, closing down seventy-two infringers and stopping the Jacksonville Jaguars football team from using a leaping jaguar logo. See “How David C. Hilliard Got the Jacksonville Jaguars to Change Their Logo,” Illinois Super Lawyers Magazine.
• In Northern Trust Co. v. J. P. Morgan Chase, David prevailed over repeated intentional copying of a major Northern Trust Brand in the NFL Superbowl.

Expert Witness in Intellectual Property Cases

David often serves as an expert witness in major litigation for clients like TRAVELERS INSURANCE, CHRYSLER, HOOVER, BLUE SHIELD OF CALIFORNIA, KIMBERLY-CLARK and 3M. He served successfully as an expert for the INTERNAL REVENUE SERVICE in a $425 million case involving evaluation of assets of the Carnation Company.

His credibility and insight as an expert witness benefit from his teaching for many years at Northwestern Pritzker University School of Law and at the University of Chicago Law School. He also benefits from extensive experience as a writer in the field of intellectual property law. His publications include:

• A treatise, Marvel, Hilliard and Welch, TRADEMARKS AND UNFAIR COMPETITION (Lexis Nexis, 11th ed., 2023), now led by Janet Marvel, which has been cited and quoted by federal courts, and has been used by the Federal Judiciary to train federal judges in intellectual property law.
• A law school text book, Hilliard, Welch & Widmaier, TRADEMARKS AND UNFAIR COMPETITION (Carolina Academic Press 12th ed., 2019), was cited and quoted by the United States Supreme Court (Moseley v. Victoria’s Secret), and is used in over fifty law school courses nationally.

As an expert witness, David has often raised constitutional and other dispositive issues that have resulted in settlements resolving multi-million dollar litigation. David has recently been an expert witness in six major intellectual property cases:

• a Reverse Confusion case in Utah in which defendant swamped plaintiff by using plaintiff’s name and mark on defendant’s website dramatically decreased plaintiff’s business by 93.5%;
• a multi-million dollar insurance defense case in the state of Washington where he discovered that plaintiff’s claims violated the public welfare clause of the Utah Code of Ethics for Engineers as well as the First Amendment of the U.S. Constitution pursuant to U.S. v. Alvarez, 132 S.Ct. 2537 and the Utah Supreme Court in Eldridge v. Johndrow, 345 P.3d 553;
• a New York case where he launched an innovative “market survey” and established that plaintiffs’ claims violated Article I of the U.S. Constitution pursuant to Bonito Boats, 489 U.S. 141 and Dastar 539 U.S. 23;
• a Michigan case where plaintiffs’ claims also violated Article I of the U.S. Constitution as well as the doctrine of fair use (recently, $8.4 million was awarded after a nine day jury trial in Los Angeles in a parallel case in which defendant failed to raise David’s Article 1 Constitutional defense);
• a genericness case in Minnesota where David demonstrated on partial summary judgment that plaintiffs’ claimed trademark was introduced as a generic term and used exclusively that way for seven years. Further, David’s surveys and historic analysis demonstrated to the court that no initially generic term has ever been “recaptured” as a trademark in the history of U.S. law;
• trial testimony in a case in the U.S. District Court in Hawaii involving application of the USPTO rules for Supplemental Registrations and the U.S. Constitutional requirements for Use In Commerce.

Mediator and Arbitrator in Intellectual Property Cases

David has handled dozens of mediations and arbitrations nationwide, and is a Federal Court and CPR/INTA-certified mediator and arbitrator. Here is how he describes his approach:

“An expert decision-maker lets the parties focus on the nuances of their particular dispute, and get a result comparable to an appellate decision that might take years, and cost millions of dollars to reach.”

His role as an adjunct professor and author of both a well respected treatise and law school text book also helps here, but the life-lessons from serving the profession and community (noted below) may be more so.

One of his most challenging mediations was in the $750 million Terra Museum conflict with the State of Illinois. It generated coverage in the New York Times, Wall Street Journal and elsewhere. See The Art of Mediation: The Terra Museum War, ABA Landslide Magazine.

Service to the Profession and CommunityDavid’s civic and professional leadership have strengthened his effectiveness as a lawyer, expert and mediator. In recent years, David received:

• the Justice John Paul Stevens Award for “extraordinary integrity and service to the community throughout his career”;
• the Lawyers for the Creative Arts “Distinguished Service Award for Outstanding Contribution to the Arts”;
• an American College of Trial Lawyers Award for “Representing the College in litigation with Honor and Distinction”; and
• from 2017-2020 David served as Chairman of the Newberry Library Board of Trustees, one of America’s leading institutions for research and scholarship in the humanities.

He is past President of the Chicago Bar Association, and currently Chair of its Past Presidents Committee. He has served as President of the Lawyers Trust Fund of Illinois, the Legal Club, and the Wayfarers Club, and was a founding member of the Illinois Commission on the Rights of Women. He is a past Chair of the Visiting Committee of the University of Chicago Law School, and served as a Judge Advocate in the United States Navy under Admiral John S. McCain.

David is currently a Trustee of the Art Institute of Chicago, a former Vice-Chair of the Art Institute and Chair of the School of the Art Institute, and was awarded the Institute’s Architecture and Design Society “Lifetime Achievement Award.” David is President of the Rettinger Foundation and Director of the Allerton Endowment Fund.

David has served as a Director of the International Trademark Association, a member of Council of the ABA Intellectual Property Law Section, and Chair of the Northwestern Law School Annual Symposium on “Intellectual Property Law and the Corporate Client.”

He was the founding Chair of the 9,000 member Young Lawyers Section of the Chicago Bar Association for which the Association established the David C. Hilliard Award given annually to the outstanding Section Committee Chair. See “A Cause for Celebration.” David was recently named an “Honorary Young Lawyer in Perpetuity” (!), and recently was honored by the Chicago Bar Association for “Leading the Way.”

David was profiled in a four-page article in Chicago Lawyer Magazine, see “Collecting to Give,” and was honored last year by The University of Chicago Law School in an article entitled “Big Picture Litigator Takes Pride in Being Civic and Professional Leader.”