Justin Gaudio (JD '08) is a shareholder with Greer, Burns & Crain. Based out of Chicago, he focuses on intellectual property law with an emphasis on global online anti-counterfeiting. We talked to Justin Gaudio about his career and his time at DePaul Law.
Q. Why did you choose to attend DePaul University's College of Law?
The city of Chicago was a big reason. Growing up in Ohio, I wanted to experience living in a large city. Along with that comes more job opportunities, particularly in the field of intellectual property.
Q. Did you always know you wanted to do IP?
Yes. My intention was to be a patent attorney. I still am. My undergraduate degree is in computer engineering [from the University of Cincinnati]. That being said, I do very little patent work. I found a niche doing online anti-counterfeiting trademark enforcement, which still utilizes my computer skills, but in a much different way.
Q. How did your time at DePaul influence your career?
I took a number of IP-related courses at DePaul, such as Trademarks and Patents, which provided me with a solid foundation. That in combination with my clerking at GBC, which came through DePaul, allowed me to hit the ground running when I started as an attorney.
A lot of the specific courses offered through CIPLIT provided that foundation, including the IP Legal Writing courses I took my first year. We were Professor Volini's first class and I know he's still over there doing great things with Cyberlaw and making sure students have a solid foundation in the digital space, which is more and more important for getting work done in today's legal environment.
Another class I found particularly helpful was Trial Advocacy. A big part of our practice is obtaining injunctions, so we're over in federal court nearly every day for multiple cases. Having those courtroom skills are very important.
I was also involved in the IP Law Society; I was on the board. Working with an extracurricular group provided great experience for being involved in Bar organizations early in my career. [It allowed me] to meet other attorneys and learn how to get involved in the legal community both here in Chicago and internationally in the trademark enforcement area.
Q. What advice would you give students who are interested in going into IP?
First, make sure it's something you find interesting. I enjoy coming in and doing what I do every day. There's a lot of challenges that we face; it keeps things new and interesting.
Once you find out what general area you like, it's two-pronged. 1) Be open minded because you don't know what type of work needs to be done. A lot of people go to law school – including myself – with one thing in mind and end up following down a different path for one reason or the other. Sometimes by choice, sometimes not by choice. Be open to trying new things. 2) Once you find something you like, try to establish yourself as an expert. Find a niche in that particular area. There are a lot of good attorneys out there, so you need something that separates you from everyone else competing for the same business.
I think Cybersecurity law and the Internet in general is going to be very important over the coming years. I think what Professor Volini's doing - with an emphasis on that and in establishing a curriculum in Cybersecurity - is something that's great. For example, a lot of IP infringement is online, and that's a game changer compared to what we would have seen even ten years ago. Counterfeiting has moved from on the ground with shipments coming into ports and sold at lower end retail stores or flea markets to China-based sellers going direct to consumers online.
Having that baseline understanding of how the Internet works and what's going on is very important to providing the best advice and developing strategies for your clients.
Q. How would you describe the DePaul Alumni community?
Since graduation, I've attended a number of DePaul law events, but more importantly, many of my good friends are DePaul Alumni who I went to school with. We see each other regularly. My fellow shareholder Amy Ziegler is a DePaul law alumni, as well as several associates on our anti-counterfeiting team, including Jessica Bloodgood, Allyson Martin and Mary Fetsco. We also bring in clerks from DePaul regularly. We utilize that pipeline [the DePaul Alumni network] to help find quality attorneys for our practice.
Q. Could you go into greater detail about your work in anti-counterfeiting?
There's a massive epidemic of fake products being sold online from China. They range from fake websites - like cheapray-bans.com - to products sold on online marketplaces like eBay and alibaba.com
There are tens of thousands of online Chinese sellers that offer these products for sale in the US. They set up convincing-looking websites to dupe consumers and confuse them into thinking they're getting legitimate products on sale, when in actuality they're getting a fake.
We work with these brands. Even though it's nearly impossible to identify these operators from China, there's still a lot of enforcement steps we can take against them in the US because many of the Internet Service Providers are here. We file lawsuits against these entities or individuals, obtain injunctions to seize their domain names, and shut down their online marketplaces. If we can identify assets, we'll restrain those as well.
Q. What do you find to be the biggest difficulty in stopping these sales?
The biggest challenges are putting a dent in this massive problem that doesn't seem to stop for many of our clients, including identifying the actual people behind these websites. For one client, we seized upwards of 100,000 domain names, and new websites continue to be created by what's clearly the same group. Because they use aliases and there's multiple layers of third party service providers, it's nearly impossible to identify them.
Ultimately, it ends in China. They don't have discovery there like they do in US cases, so it's very difficult to identify these individuals and bring them to justice.
Q. What are some of the most common products you see counterfeited?
Anything that ships and sells at a margin is counterfeited. Luxury goods, jerseys, and footwear are the most common, but unfortunately you see a lot of medicines, air bags, any type of wear parts - drill bits, headphones, cell phone cases.
Q. What are some of your most notable accomplishments since starting at Greer, Burns & Crain?
I was made a partner at GBC relatively young and offered a shareholder position the next year. Since then, the firm's grown considerably, including the anticounterfeiting practice. We were the top filer of US trademark litigation last year [2017] in the US with over 100 cases filed.
We represent 30 to 40 world renowned brand owners. We've seized over 200,000 domain names, which I think is by far more than any other organization in the world. We're a 25-person law firm, so I think that's particularly impressive for us to hit that mark when there's firms out there with thousands of attorneys.
Q. Do you see any way of making a dent in the problem?
They didn't have IP laws in China until 30 or so years ago, so there's a whole generation of people in China who just don't understand IP. It continues to improve, but part of the problem is that a significant portion of the Chinese economy relies on stealing IP from the US. Until something changes and there are bigger consequences for getting caught on the ground in China, and China provides more cooperation with restraining financial assets related to these bad actors and in giving us information to identify these bad actors, it will continue. For example, many of these websites only accept credit cards where the money ends up in a Bank of China account. One brand owner tried to go after funds in China, but Bank of China vigorously fought it and the case has been pending for years.
Q. How would you advise people to be better consumers
Use common sense. If a deal seems too good to be true, it usually is.
In addition, understand where you're buying the product from. For example, on Amazon, are you buying it from Amazon or are you buying from a third party selling on Amazon? If it's a third party, who is that third party? Do a little bit of due diligence to understand who you're buying from before shelling out your credit card and purchasing a product just because it seems like a good deal.
Many brands have lists of authorized retailers on their webpages, so even if you don't buy it from them directly, you can usually determine if the store you're looking at is an authorized retailer. And if it's not, there's some inherent risk there.