Los Angeles – MTV parent Viacom Inc. and its flagship “Jersey Shore” reality series star Paul Delvecchio Jr., better know to the world as “DJ Pauly D,” have opted to settle a trademark infringement lawsuit brought by a Connecticut DJ who claims he has been using the trademark “DJ Paulie” since 1973.
Judge Alvin Thompson of the District of Connecticut signed off on the dismissal of Paul Lis and DJ Paulie Broadcasting LLC’s action Wednesday without further comment or any details of the settlement agreement.
Lis sued Delvecchio, MTV, Viacom, the Palms Casino Resort, Baskin-Robbins Inc. and Hearst Communications Inc. in June 2011 alleging they were infringing his trademark and tarnishing his reputation by virtue of the bad behavior Delvecchio and others exhibit on “Jersey Shore.”
Lis adopted the name DJ Paulie in 1971 and has used it continuously in interstate commerce since 1973 for DJ services and performances on various shows and productions, he says. He obtained a federal registration for the trademark from the U.S. Patent and Trademark Office in September 2010.
Throughout his four-decade career Lis has cultivated and maintained a “wholesome, family oriented image and reputation with G-rated content” in his performances and shows, to the extent that he uses radio edits of some songs containing profanity or other objectionable content. He was selected by Disney Radio to be a talent judge in 2000.
In 2009, meanwhile, MTV began airing “Jersey Shore,” with Delvecchio, one of its main figures, promoting himself as DJ Pauly D.
“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 . . . had spent decades cultivating and acquiring such goodwill at great expense,” Lis’ complaint said.
Confusion immediately broke out between DJ Paulie and DJ Pauly D due to their similar spelling and identical sound, with a negative impact on Lis’ internet search rankings, Lis claimed. MTV even tagged its DJ Pauly D related content with the misspelling DJ Paulie D to drive more traffic to its sites, he said.
“To date the defendants have ignored the rights of the plaintiffs, and bulldozed ahead utilizing their immense market power in advertising and promotion of their star performer,” the complaint said.
The Palms Casino has advertised and promoted Delvecchio as its current resident DJ, Baskin-Robbins has sold DJ software incorporating the DJ Pauly D trademark, and Hearst has promoted its Cosmopolitan magazine iPad app with Delvecchio and the DJ Pauly D trademark, according to the complaint.
Delvecchio has repeatedly attempted to trademark the name DJ Pauly D since 2010, but the PTO has time and again rejected his overtures.