Tuesday, July 5, 2011

Will the Real DJ Paulie/DJ Pauly D, Please Stand Up, Please Stand Up?

Lis v. Delvecchio, No. 3:11-CV-01057-AWT (D. Conn. filed June 30, 2011).

Mr. Paul Lis, a Connecticut man who claims to have used the name “DJ PAULIE” since 1973 as a disc jockey, has filed a complaint for trademark infringement in federal court in Connecticut against Rhode Island resident Paul DelVecchio Jr, more popularly known as “DJ Pauly D” on the MTV Network show “Jersey Shore.” The complaint also names 495 Productions, the producer of the television show, MTV Networks, the Palms Casino Resort in Las Vegas, Room 960, a nightclub in Hartford, Baskin-Robbins and Hearst Publications, as additional defendants.
The complaint alleges claims for federal trademark infringement, federal trademark dilution, federal unfair competition, state unfair competition, and violation of the Connecticut Unfair Trade Practices Act. No specific dollar amount for damages is specified in the complaint, which also seeks injunctive relief, punitive damages and attorneys fees.

Obviously, more facts will need to be developed before the claims can be properly analyzed. But at the outset, the claims for federal trademark dilution, and for injunctive relief, may be in trouble.

Federal law allows the owner of a "famous mark" to enjoin a person from using "a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark.” To succeed on his federal dilution claim, then, Mr. Lis has the burden of proof to show: (1) that he owns a “famous” mark; (2) that the defendants are making use of the mark in commerce; (3) that Mr. Delvecchio adopted his mark after Mr. Lis’s mark became famous; and (4) that Mr. Delvecchio’s mark is likely to cause dilution by blurring or dilution by tarnishment of Mr. Lis’s famous mark.

Here, Mr. Lis’s complaint alleges dilution by tarnishment by claiming that the “Jersey Shore” television show follows “a group of young adults pursuing a debauched lifestyle suggestive of loose morals, violence, intoxication and liberal profanity – the exact opposite” of the good reputation Mr. Lis purportedly has spent decades building up. The problem is that Mr. Lis is likely to have trouble showing that he owns a “famous” mark. Under federal law, a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner. Can Mr. Lis really prove that his “DJ PAULIE” brand is “widely recognized by the general consuming public in the United States.” If not, then his dilution claim is likely to fail.

Mr. Lis also may face a problem in seeking injunctive relief, at least before a trial. The complaint alleges that Mr. Lis’s attorneys first contacted Viacom about the issue in early 2010. Most courts require a showing of “likelihood of success on the merits” and of “irreparable harm” in order to obtain preliminary injunctive relief before the trial. Leaving aside the case on the merits, it will be difficult for Mr. Lis to argue he has been “irreparably harmed” and requires relief prior to trial where he and his attorneys have waited nearly 18 months to pursue their claims in court.

Most lawsuits of this nature settle at some point, and this one probably will settle, also. If not, look for a trial in a couple of years over who is the “real DJ Paulie (Pauly) D.”

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