Paul “DJ Paulie” Lis of South Windsor, Connecticut has sued Paul “Pauly D” DelVecchio of MTV’s “Jersey Shore,” who also happens to be a DJ, claiming that the reality star has infringed on his trademark and hurt his business.
Lis has registered his trademarked “DJ Paulie” with the United States Patent and Trademark Office (USPTO). In his registration, he claims continuous use since 1973—seven years before DelVecchio was born. “Jersey Shore”‘s DelVecchio, in contrast, has been refused registration of “DJ Pauly D” by the USPTO and is currently appealing that refusal. Because registration carries with it a presumption of the right to use a mark nationwide, that makes the score right now Paul 1: 1, Paul 2: 0.
Lis is asking for $4 million in damages and claims he has been building his reputation as a DJ for 40 years, way before Pauly D came along—and now all his hard work is for naught as when potential customers try to find him online, “Jersey Shore” information appears instead. Accordingly, the plaintiff alleges that Pauly D’s name constitutes trademark infringement because it not only creates a likelihood of confusion with his trademark but also dilutes it.
Jose M. Rojas, attorney for Lis, claims that he sent a cease and desist letter to MTV to stop marketing “DJ Pauly D” but never received a response. That lack of reply led to the current lawsuit, which MTV has not commented on but has until September 30 to respond to.
Lis maintains he adopted the mark “DJ Paulie” in 1971 and has used it continuously since 1973; DelVecchio’s attempts to trademark his name, however, have been denied by the United States Patent and Trademark Office.
According to the complaint: “The reality television show gained immediate popularity by following a group of young adults pursuing a debauched lifestyle suggestive of loose morals, violence, intoxication and liberal profanity—the exact opposite of the reputation the Plaintiff, ‘DJ Paulie’ that[sic] he had spent decades cultivating and acquiring such good will at great expense.”
Other defendants in the suit include Viacom and Hearst Publications as well as ice cream company Baskin Robbins, which the plaintiff claims “advertised, promoted and sold disc jockey software incorporating the mark ‘DJ Pauly D,’ and in association with the persona” of DelVecchio.
What do you think about the battle of the Paulies? Who wins?