Via Overlawyered comes the news that a battle royale between two DJ Paulies is coming to a head. Unfortunately for those of us who sat through such seminal DJ-centric films as Breakin' and Breakin' 2: Electric Boogalo, this battle will be taking place in an uptight courtroom rather than in a grafitti-ridden subway stop or something.
The trademark infringement claim centers on one Paul Lis, who until recently, was the premier DJ Paulie/Pauly in the state of Connecticut:
Paul Lis of South Windsor, Conn., said he spent 40 years building up a reputation as the region’s "DJ Paulie" before DelVecchio began calling himself "DJ Pauly D" on television. . . .
"He formally trademarked the name ‘DJ Paulie’ and then came the ‘Jersey Shore’ which basically wiped him off the face of the map," attorney Jose M. Rojas told NewsCore.
Lis' lawsuit alleges that MTV "flooded the internet" with Jersey Shore content, wiping almost any trace of the "Original One and Only DJ Paulie® since 1973" (according to his website) right off the search engine map. Now, it would seem obvious that MTV hasn't actually done any "flooding" as popular TV shows generate their own heat, via "news" items, forum discussions, Facebook fan pages, etc., not to mention that the cast members have never shied away from any self-promotional activity.
I'm sure it's disheartening for the "original" DJ Paulie to search his own name only to have Google inform him that he's misspelled it and show him results for the infinitely more popular DJ Pauly D, but anyone looking for a mild-mannered DJ who's been in business "since 1973" (mainly in the greater Connecticut area) is not going to mistake a gel-topped, Cadillac-tattooed Jersey boy for the person in question. (Or so you would think. In his cease-and-desist letter to Viacom, Lis points out that in three months he received "112 emails and 5 phone inquiries regarding whether or not he was DJ Pauly D from MTV's Jersey Shore." 117 fast-moving morons is a lot of morons.)
In response to this"redirection" of DJ Paulie's fame and fortune, he's asking for $4 million in damages, applying not only to "loss of revenue" due to search engine results, but also the damage done to DJ Paulie's "G-rated" reputation by DJ Pauly D's actions, including allegedly physically assaulting a male hairdresser. (This is on top of the "debauched lifestyle suggestive of loose morals, violence, intoxication and liberal profanity" listed in the filing.)
The "Original DJ Paulie" has several things going for him in this suit. First of all, he's been using the name "DJ Paulie" continuously since 1971. Not only that, but he filed for a trademark on "DJ Paulie" in 2008, roughly a year before Jersey Shore debuted. Add to this the fact that Jersey Shore's DJ Pauly D has applied for a trademark and been rejected three times for "likelihood of confusion," and it looks as if DJ Paulie may have a legitimate claim after all. And as for the "moron in a hurry" litmus test? As noted above, he's run into a few of those as well. (Presumably, most of them warning him to stay away from their sisters.)
Unfortunately, despite these positives, Lis and his lawyer have also dragged in a lot of extras which muddle the relatively clear waters of trademark infringement and send it saling into "spray and pray" territory. First off, Lis claims that MTV "placed content on the internet with metatags and/or other internet searchable indicia intentionally utilizing the spelling of 'DJ Paulie'" to draw traffic to the Jersey Shore star. Unfortunately, this claim heads down a path paved by other failed lawsuits as Google has shown that it does not use metatags to provide search results.
He's also naming Baskin-Robbins as a defendant based on its marketing of "disc jockey software incorporating the mark 'DJ PAULY D'" and Hearst Communications for its Cosmo app, which was promoted by DelVecchio. Also listed are the mysterious John Does, all 999 of them, each of which is potentially "liable to the plaintiff for trademark infringement and other related civil wrongs," which I would take to mean that he and his lawyer are hoping to find more defendants through the discovery process.
Of course, all this attendant publicity has gotten his name back to the top of the search engine results. Unfortunately, it does mean he has to share the headlines with his ultra-tanned nemesis.