Attorneys

EDUCATION:

B.S., Computer Engineering, minor in Mathematics, University of Cincinnati, 2005

 

J.D., DePaul University, 2008


Justin R. Gaudio


 

Justin Gaudio is a shareholder with Greer, Burns & Crain in Chicago. His legal practice encompasses all aspects of intellectual property law including patents and trademarks, with significant experience and emphasis on Internet and technology law.

 

Mr. Gaudio regularly handles matters related to developing and implementing programs to combat online counterfeiting and infringement.  His technical background has enabled GBC to develop effective and efficient online enforcement solutions.  As a result, GBC has seized tens of thousands of counterfeit domains, millions of dollars in assets and amassed over $2 billion in judgments.

 

News Regarding Counterfeit Website Enforcement Successes

 

As a result of his responsibilities related to GBC’s online brand protection efforts, Mr. Gaudio is highly experienced in all types of internet website and domain name disputes.

 

He has represented clients in numerous counterfeiting, trademark infringement and Anti-Cybersquatting Consumer Protection Act (ACPA) litigation in U.S. Federal Courts that have resulted in multimillion dollar judgments against infringers and thousands of domains names being transferred to clients.  He has also handled domain name dispute arbitration actions in jurisdictions around the world (UDRP, Nominet, and others). Mr. Gaudio also has significant IP enforcement experience removing infringing content from Internet search engines and social media networks.

 

Mr. Gaudio has worked numerous times with law enforcement and customs authorities internationally to protect GBC clients’ brands. His efforts overseeing hundreds of investigations and raids in the Unites States, China, and Europe have resulted in the seizure of hundreds of thousands of counterfeit products.

 

Mr. Gaudio’s experience with patents includes litigation, drafting and prosecuting patent applications as well as preparing opinions on infringement, invalidity, and due diligence.

 

He has prosecuted patents and provided counseling to clients in diverse technical areas, including networking and data communications, computer software, footwear and apparel, heavy duty vehicles, wallboard manufacturing, power tools and railway maintenance equipment.

 

Mr. Gaudio received his law degree from DePaul University. Prior to law school he was awarded a Bachelor of Science in Computer Engineering and minor in Mathematics from the University of Cincinnati.

 

Prior to joining GBC Mr. Gaudio worked at General Electric Aircraft Engines as an Engineering co-op and a law firm specializing in aviation related litigation.

 

Representative Matters

 

  • Deckers Outdoor Corp. v. Does 1-100; 12-cv-9120 (N.D. Ill. 2012)
    • $200 million judgment entered against Defendants, permanent transfer of more than 1,500 domain names, and a substantial amount in linked PayPal accounts frozen and transferred in partial satisfaction of the judgment.

 

  • Tory Burch LLC, et al. v. Does 1-100; 12-cv-7163 (N.D. Ill. 2012)
    • $200 million judgment entered against Defendants, permanent transfer of nearly 1,000 domain names and a substantial amount in linked PayPal accounts frozen and transferred in partial satisfaction of the judgment.

 

  • True Religion Apparel, Inc., et al. v. Does 1-100; 12-cv-9894 (N.D. Ill. 2012)
    • $200 million judgment entered against Defendants, permanent transfer of more than 350 domain names, and a substantial amount in linked PayPal accounts frozen and transferred in partial satisfaction of the judgment.

 

  • Oakley, Inc. v. Does 1-100; Case No. 12-cv-9864 (N.D. Ill. 2012)
    • $200 million judgment entered against Defendants, permanent transfer of more than 700 domain names and a substantial amount in linked PayPal accounts frozen and transferred in partial satisfaction of the judgment.

 

  • Luxottica USA LLC v. The Partnerships, et al.; 13-cv-4429 (N.D. Ill. 2013)
    • Awarded $500,000 per Defendant, permanent transfer of nearly 800 domain names and a substantial amount in linked PayPal accounts frozen and transferred in partial satisfaction of the judgment.

 

  • Calvin Klein Trademark Trust et al. v. The Partnerships, et al.; 13-cv-8186 (N.D. Ill. 2013)
    • Awarded $200,000 per defendant, permanent transfer of nearly 200 domain names and a substantial amount in linked PayPal accounts frozen and transferred in partial satisfaction of the judgment.

 

  • Manolo Blahnik International Limited v. The Partnerships, et al.; 14-cv-1413 (N.D. Ill. 2014)
    • Awarded $2,000,000 per defendant, permanent transfer of over 300 domain names and a substantial amount in linked PayPal accounts frozen and transferred in partial satisfaction of the judgment.

 

  • NBA Properties, Inc. et al. v. The Partnerships, et al.; 13-cv-7181 (N.D. Ill. 2013)
    • Awarded $2,000,000 per defendant, permanent transfer of 1,000+ domain names and a substantial amount in linked PayPal accounts frozen and transferred in partial satisfaction of the judgment.

 

  • Burberry Limited, et al. v. The Partnerships, et al.; 14-cv-4824 (N.D. Ill. 2014)
    • Awarded $2,000,000 per defendant, permanent transfer of over 600 domain names and a substantial amount in linked PayPal accounts frozen and transferred in partial satisfaction of the judgment.

 

Publications & Lectures

  • Presenter, “Practical Aspects of Handling Counterfeiting Cases,” John Marshall Law School Annual IP Conference, February 2015
  • Quoted, “Counterfeiters Targeting Social Media with Fake Goods,” ABC 7 Chicago, December 2014
  • Presenter, “Online Counterfeiting Enforcement,” Canadian Antifraud Centre International Mass Marketing Fraud Conference, February 2014
  • Presenter, “Civil Litigation and Counterfeiting,” Underwriters Labratory Anticounterfeiting Conference, June 2013
  • Presenter, “Top Issues In Anti-Counterfeiting Law,” IPLAC IP Law Symposium, November 2, 2012
  • Panelist, “Effective, Efficient…Enforcement Against Counterfeit Websites,” IACC Fall 2012 Conference
  • Quoted, “Counterfeit Battles Heat Up On Web,” The National Law Journal, June 11, 2012
  • Presenter, “Online Branding Scams,” Intellectual Property Law Association of Chicago (IPLAC) Event, April 17, 2012
  • Presenter, “Recent Developments in IP and Internet Law,” Greer, Burns & Crain CLE Event, April 16, 20111

 

Memberships & Affiliations

  • International Trademark Association (INTA)
  • International AntiCounterfeiting Coalition (IACC) – Internet Committee
  • Intellectual Property Law Association of Chicago (IPLAC) – Internet and Advertising Committee Chair 2012 – 2013

 

Experience

  • Patent Litigation
  • US and Foreign Patent Prosecution
  • Opinions on Patent Infringement, Validity and Enforceability
  • Client counseling for Licensing and Portfolio Development
  • Trademark and Trade Dress Litigation
  • US and Foreign Trademark Registration
  • Opinions on Trademark Infringement, Validity and Enforceability
  • Trademark Opposition and Cancellation Proceedings
  • Worldwide Brand Protection Counseling for Combating Domestic and Off-Shore Infringers and Counterfeiters
  • Internet Copyright and Trademark Enforcement including Removal of Infringing Links from Search Engines and Counterfeit Website Shut Downs
  • Domain Name Acquisition, Protection and Disputes including Uniform Domain
  • Name Dispute Resolution (UDRP) Actions
  • Digital Millennium Copyright Act (DMCA) Take Down Notice Drafting and Defense
  • Anti-Cybersquatting Consumer Protection Act (ACPA) Litigation

 

Bar Memberships

  • U.S. Patent and Trademark Office
  • Supreme Court of the State of Illinois
  • U.S. District Court for the Northern District of Illinois

 

Example Technical Fields

  • Internet Technologies including Search Engines and Web Hosting
  • Computer Systems and Peripherals
  • Computer Software
  • Networking and Data Communications
  • Wireless Communications
  • Database Systems
  • Video Conferencing systems and software
  • Liquid Crystal Displays
  • Power Tools
  • Railway Maintenance Equipment
  • Footwear
  • Hair Clippers and Trimmers