- Intellectual Property
- International Reach
- J.D., Vermont Law School, 1994
- B.A., College of the Holy Cross, 1989
- New York
- U.S. Court of Appeals – Federal Circuit, Second Circuit
- U.S. District Court – Southern, Western, and Eastern Districts of New York
Paul Garrity is the managing partner in the firm's New York office.
Areas of Practice
Mr. Garrity represents clients in complex commercial matters, particularly in the areas of intellectual property, advertising and marketing, trade secrets and regulatory enforcement. He has represented clients from a diverse spectrum of industries, including OTC pharmaceuticals, apparel, alcoholic beverages, media and entertainment, luxury goods, software, consumer products and financial services. Mr. Garrity's transactional practice includes counseling clients on new media and emerging marketing platforms and technologies.
Mr. Garrity is Chambers-ranked for intellectual property litigation. He has litigated disputes involving trademarks, trade dress, false advertising, trade secrets, copyrights, dilution, patents, parallel imports and counterfeiting, including the defense of consumer class actions. Mr. Garrity has substantial trial experience, having handled jury trials, bench trials, and evidentiary hearings in courts throughout the country. Additionally, Mr. Garrity has represented clients in matters before the Food and Drug Administration, the National Advertising Division of the Council of Better Business Bureaus, the United States Patent and Trademark Office and the World Intellectual Property Organization.
- Mr. Garrity was a member of the pro bono team at Sheppard Mullin receiving the 2011 Frankel Award from Human Rights First for their successful representation of Abdalmageed Haroun, a prominent human rights activist and former Sudanese prisoner. In the Sudan, Mr. Haroun's work focused on women's rights, the plight of internally displaced refugees, and the victims of the conflict in Darfur. As a result of his selfless and heroic efforts, Mr. Haroun was detained for months, persecuted, tortured, and threatened with death by the Sudanese government, forcing him to flee the country. The firm represented Mr. Haroun in connection with his application for asylum in the United States.
- Listed as a Leading Individual – World Trademark Review (WTR), 2016, 2017
- Chambers USA: America's Leading Lawyers for Business (Leading Individual, Intellectual Property), 2010-2017
- Intellectual Property, Legal 500, 2013-2017
- New York Super Lawyer, Super Lawyers, 2009-2017
DigiMedia v. Beasley Broadcasting, Inc. et al. (D. Del. 2018) Represented iHeartMedia in a patent infringement suit relating to digital music broadcasting. Following entry of a stay pending outcome of reexamination proceedings in the USPTO, which resulted in substantial amendments to the patents, case dismissed with prejudice by Plaintiff.
First Manhattan Consulting v. Novantas (N.Y. Supreme 2017) Member of trial team defending Novantas and its executives in competitor litigation seeking nearly $12 million in damages. Following a four day jury trial, secured a verdict finding no liability on contract and tortious interference claims sent to the jury, completed by a ruling from the court on claims for unfair competition and misappropriation of trade secrets.
Montobacco v. Marley Green (S.D.N.Y. 2017) Defending MARLEY NATURAL brand in trademark and unfair competition litigation. Plaintiff’s preliminary injunction motion denied.
Nelson v. MillerCoors (E.D.N.Y. 2016) Defended MillerCoors in putative class action alleging deceptive trade practices involving geographic designations used in beer labeling. Motion to Dismiss granted.
American Well v. Teladoc (D Mass. 2016; PTAB)
Successful defense of Teladoc, first and largest telehealth platform in the U.S., in computer systems patent litigation. Motion to dismiss granted invalidating asserted patent.
Merial v. FidoPharm (N.D. Ga. 2015)
Represented FidoPharm in false advertising litigation brought by Merial in connection with FRONTLINE pet care product. Defense of preliminary injunction motion allowed comparative claims to remain in the market.
Beastie Boys v. Monster Energy (S.D.N.Y. 2014)
Trial counsel to iconic hip-hop group in an eight-day trial. Obtained complete jury verdict on claims for copyright infringement and false endorsement.
Parallel Networks v. Abercrombie & Fitch et al. (E.D. Tex. 2014) Represented Sony Electronics in patent infringement suit involving a method and apparatus for client-server communication. Won summary judgment of noninfringement following early claim construction.
Goodrich Corp. v. Sojitz Aerospace (Amer. Arb. Assoc. 2014) Represented United Technologies in claim arising from design and manufacture of reconnaissance system for F-15 aircraft.
G. Pohl-Boskamp v. Perrigo (D. Mass. 2013)
Lead counsel for Perrigo in trademark and trade dress litigation re NITROLINGUAL (nitroglycerin). Successful defense of preliminary injunction motion.
Bayer v. Sergeant's Pet Care (S.D.N.Y. 2013)
Lead counsel to Sergeant's in false advertising and unfair competition suit brought by Bayer Healthcare involving flea and tick control products. Settlement following expedited discovery and a three day evidentiary hearing on plaintiff's preliminary injunction motion, in which Court ruled for Sergeant's on 7 of the 8 advertising claims targeted by Bayer.
Imaginal Sys v. Leggett & Platt (C.D. Cal. 2012, aff’d Fed. Cir. 2013)
Trial counsel for Imaginal in patent litigation involving manufacture of box springs. Multimillion dollar verdict at jury trial affirmed on appeal.
Alcon Pharmaceuticals Ltd. v. Perrigo Co. (N.D. Tex. 2012)
Lead counsel for Perrigo in ANDA litigation re PATANASE® (olopatadine hydrochloride).
Merial LTD and BASF Agro BV v. Cipla Limited and Velcera, Inc. (Fed. Cir. 2012) Appellate counsel for Cipla in dispute involving patent infringement and contempt issues concerning veterinary products containing fipronil and methoprene.
Healthy Source LLC v. Atlantic Coast Media Group (Dist. NJ 2011)
Defended nutritional supplement marketer in search engine advertising case.
CIF Licensing v. Lenovo Group (S.D.N.Y. 2011)
Represented Lenovo in patent infringement suit involving MPEG-2 digital video compression and transmission standards.
Cartier International AG v. Philippe's Watches (C.D. Cal. 2011) Represented Cartier and Panarei in action against gray market retailer.
10th Avenue Hospitality v. AMC Entertainment (S.D.N.Y. 2010)
Defended leading theater operator and national real estate developer against trademark infringement claims. Successful defense of plaintiff's TRO motion.
Cartier International AG v. American Exchange (S.D.N.Y. 2010)
Represented Cartier in trade dress and design patent infringement litigation resulting in destruction of watches, injunctive relief, and disgorgement of profits.
Rexall Sundown Inc. v. Perrigo (E.D.N.Y. 2010)
Lead trial counsel for Perrigo, a manufacturer of OTC pharmaceutical and nutritional products, in a four week false advertising jury trial involving glucosamine chondroitin dietary supplements. Jury verdict in Perrigo's favor on all claims asserted by Rexall, and awarding monetary damages against Rexall on Perrigo's counterclaims.
Bayer Schering Pharma AG et al. v. Sandoz, Inc. et al. (S.D.N.Y., Dist. Nev.)
Counsel to Sandoz in ANDA litigations re YASMIN® and YAZ® (Drospirenone/Ethinyl Estradiol) oral contraceptives.
Wyeth v. Novartis Consumer Health (NAD 2009)
Represented Novartis in advertising challenge before the National Advertising Division of the Council of Better Business Bureaus.
Physician Formulas v. Orexis (C.D. Cal. 2009)
Defended nutritional supplement marketer in search engine advertising case. Dismissed following argument of motions in limine before trial.
DGG Properties v. Giovanni’s (D. Conn. 2009)
Defended family-owned restaurant in trademark infringement action. Successful Daubert motion excluding plaintiff’s expert testimony.
PortfolioScope v. Oracle (D. Mass. 2008)
Trial counsel to Oracle Financial Services Software Ltd. in a lawsuit alleging infringement of software source code. Case settled during cross-examination of plaintiff's witnesses at jury trial.
Net Ratings, Inc. v. TACODA Inc. (S.D.N.Y. 2009)
Defended leading on-line behavioral targeting advertising network against patent infringement claims. Case dismissed before Markman briefing.
- Federal Bar Council Quarterly, February 2016
- "Octane Fitness Producing More Patent Act and Lanham Act Attorneys’ Fee Awards,” NYSBA Bright Ideas, Vol. 24, No. 2., Fall 2015
- "Pom v. Coke At The Supreme Court: FDA Approval May Not Preempt False Advertising Challenges To Labels," The Metropolitan Corporate Counsel, June 2014
- "High Tide For False Patent Marking Claims?" Metropolitan Corporate Counsel Magazine, July 2011
- "Legal Ethics and The Social Network," Social Media Law Blog, November 2010
- "Advertising Regulation in the Web 2.0 World," Metropolitan Corporate Counsel, November 2010
- “Brand Protection on Social Networking Sites,” Search Engine Strategies, August 2009
- "Valuing Brands: Trying to Make the Vague Precise," The National Law Journal, October 13, 2008
- "Did 'Roommates.com' Nix Consumer-Made Web Content?" New York Law Journal, May 23, 2008
- "Who Owns The Website?" The Intellectual Property Strategist, May 2008
- "Perfect Storm: Contributory Trademark Infringement in Electronic Commerce," BNA's Patent, Trademark & Copyright Journal, February 22, 2008
- "Search Engine Advertising 101," Metropolitan Corporate Counsel, March 2007
- "Keyword Advertising: The Second Circuit Stands Alone," State Bar News, Jan/Feb 2007
- "Avoid Getting Caught in the Web," Bright Ideas, Winter 2006
- "Online Trademark Infringement or 'Nominative Fair Use'?" New York Law Journal, October 16, 2006
- "Federal Circuit Decisions Place a Premium on Lawyering," New York Law Journal, October 17, 2005
- "The Use or Non-Use of Trademarks in Pop-Up Advertising and Keyword Advertising," The NYIPLA Bulletin, March/April 2005
Covering Your Ads Blog Posts
- "Paid to Post? #FTCAdvice for Influencers," September 29, 2017
- "Q&A with Sheppard Mullin's Paul Garrity," Law360, July 18, 2011
- The American Lawyer, December 21, 2017
- Law360, October 17, 2014
- "POM Wonderful v. Coca-Cola," NYSBA Annual Meeting, January 28, 2014
- "Advertising in the Digital Age: An Intense Focus on Sweepstakes, Promotions & Social Media," American Conference Institute, September 11-12, 2012
- "Social Media Dispute Resolution," Stafford CLE Webinar, August 9, 2012
- "Closing Argument, Christian Louboutin v. Yves Saint Laurent, The Functionality Doctrine," Honorable William C. Conner Inn of Court, SDNY, April 24, 2012
- "Social Media Marketing," Stafford CLE Webinar, September 20, 2011
- "Top Litigators Speak: IP Litigation Considerations for Advertisers," American Conference Institute's Advanced IP Forum for Advertising Counsel, New York, April 28, 2011
- "Is Grey the New Black? Parallel Imports and Counterfeits in the Online Marketplace," 1st Annual Fashion Law Institute Symposium: Global Growth and Legal Landscapes, Fordham Law, April 15, 2011
- "Orphan Copyright Owners v. Goliath Book Publisher," The Hon. William C. Conner Inn of Court, April 13, 2011
- Guest Lecturer, Georgetown University Law Center, "Law of Advertising," November 2010
- "Emerging Trademark Threat @ Twitter, Facebook, MySpace," Stafford CLE Webinar, October 28, 2010
- "Are You Protecting Your Trade Secret Assets," CLE Program, October 29, 2009
- "Live From the Courtroom - Trying Consumer Protection and Privacy Litigation," Spring Meeting of the American Bar Association Section on Antitrust Law, Washington, DC, March 26, 2008
- "Trademarks in Business Transactions," INTA Roundtable, January 23, 2008
- "Electronic Discovery in Practice," Cardozo Law School, October 8, 2007
- "Trademark Computer Systems," INTA Annual Meeting, May 2, 2007
- "Third Party Uses of Trademarks," Fordham Law Int'l IP Law and Policy Conference, April 13, 2007
- "Legal Issues in Marketing and Advertising," INTA Roundtable, January 24, 2007
- "The Great Keyword Debate," NYSBA, Intellectual Property Law Section, October 14, 2006
- "E-Discovery: Opportunities and Challenges," International Technology Law Association Bangalore, India, February 1, 2006
- "Internet Advertising," Computer Law Association, October 27, 2005
- "Is Your Brand Name at Risk," CLE Program, June 15, 2005
- "Corporations Sue Google Over Results for Competitors," NPR Radio, Morning Edition, February 8, 2005
- Protecting Your Business Interests: How to Successfully Operate a Business Under the Laws of the United StatesAugust 28, 2015
- Beware The New Patent Trolls - Strategies For Handling and Avoiding False Patent Marking Claims after Forest Group v. Bon ToolABA Section of Litigation - Intellectual Property Roundtable DiscussionMay 18, 2010
- Connor Inn of Court
- American Bar Association
- The Association of the Bar of the City of New York
- New York Intellectual Property Law Association
- International Trademark Association