Lis et al v. Delvecchio et al

Filing 1

COMPLAINT against 495 Productions, Baskin-Robbins Inc., Paul Delvecchio, Jr, John Does, Fiesta Palms LLC, Hearst Communications, Inc., Room960 LLC, UMG Recordings,Inc., Viacom, Inc, filed by DJ Paulie Broadcasting LLC, Paul Lis. (Attachments: # 1 ExhibitsPart 1, # 2 ExhibitPart 2, # 3 ExhibitPart 3, # 4 ExhibitPart 4, # 5 Civil Cover Sheet)(Montgomery, A.)

Jose Rojas (Bar No. ct22569)
THE ROJAS LAW FIRM
40 Russ Street
Hartford, Ct 06106-1520
Telephone: [phone]
Fax: [phone]
Email: [e-mail]
Attorneys for Plaintiffs
UNITED STATES DISTRICT COURT
DISTRICT OF CONNECTICUT
HARTFORD DIVISION
_____________________________________________________________
PAUL LIS
DJ PAULIE BROADCASTING LLC
Plaintiffs
vs.
PAUL DELVECCHIO, JR
and
495 PRODUCTIONS
and
VIACOM, INC
Dba MTV Networks
and
UMG RECORDINGS, INC.
and
FIESTA PALMS LLC
Dba Palms Casino Resort
and
BASKIN-ROBBINS, INC.
and

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CIVIL ACTION NO.

June 30, 2011

COMPLAINT FOR TRADEMARK
INFRINGEMENT

INJUNCTIVE RELIEF

AND OTHER RELIEF

(Jury Demand Endorsed Hereon)

HEARST COMMUNICATIONS, INC. )
)
and
)
)
ROOM960 LLC
)
)
and
)
)
JOHN DOE(S) 1-999
)
)
Defendants
)
_____________________________________________________________

Plaintiffs, Paul Lis and DJ Paulie Broadcasting, LLC, for their Complaint against
Defendants states the following: Allegations made are premised on the belief that the same
are likely to have evidentiary support after a reasonable opportunity for further
investigation and discovery, and allege as follows:
NATURE OF THE ACTION
1.

This action arises under the Trademark Laws of the United States, 15 U.S.C.

§§1051 et seq., and seeks preliminary and permanent injunctive relief, and attorneys’ fees
based upon the defendants’ i) trademark infringement in violation of §43 of the Lanham
Act, 15 U.S.C. §1125; and ii) federal unfair competition and false designation of origin in
violation of §43 of the Lanham Act, 15 U.S.C. §1125(a); and iii) Connecticut state
trademark infringement, unfair competition and injury to business reputation in violation
of Connecticut common law.
PARTIES
2.

Plaintiff, PAUL LIS, is a citizen and resident of Farmington, Connecticut, with a

place of business of at 1430 Ellington Road, South Windsor, CT 06457, hereinafter
referred to as “DJ Paulie”.

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3.

Plaintiff, DJ PAULIE BROADCASTING, LLC, (Hereinafter, “DJ Paulie

Broadcasting”) is a Connecticut limited liability company with its principal place of
business at 1430 Ellington Road, South Windsor, CT, formerly at 83 Songbird Lane,
Farmington, CT 06032.
4.

Defendant, PAUL DELVECCHIO, JR., is a citizen and resident of Rhode Island.

Defendant has done and is doing business within the state of Connecticut.
5.

Defendant, 495 PRODUCTIONS, INC. (hereinafter, “495 Productions”), is a

California corporation whose principal office or place of business is 4222 West Burbank
Boulevard, Second Floor, Burbank, CA 91505.
6.

Defendant, VIACOM INTERNATIONAL (hereinafter, “Viacom), is a Delaware

corporation whose principal office or place of business is 1515 Broadway, New York, New
York 10036.
7.

Defendant, UMG RECORDINGS, INC. (hereinafter, “UMG”) is a Delaware

corporation with its principal office or place of business located at 2220 Colorado
Boulevard, Santa Monica, CA 90404.
8.

Defendant, FIESTA PALMS, LLC, dba Palms Casino Resort, and Palms Casino

and Resort, (hereinafter, “Palms Casino”), is a Nevada Limited Liability company whose
principal office or place of business is 4321 West Flamingo Road, Las Vegas, Nevada
89101.
9.

Defendant, BASKIN-ROBBINS, INC., (hereinafter, “Baskin-Robbins”) is a

Delaware corporation whose principal office or place of business is 130 Royall Street,
Canton, MA 02021.
10. Defendant, HEARST COMMUNICATIONS, INC., (hereinafter, “Hearst”) is a

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Delaware corporation whose principal office or place of business is 300 West 57th Street,
38th Floor, New York, New York 10019, and is the record owner of the brand, print
publication and website, COSMOPOLITAN, along with U.S. Trademark Registration No.
3,761,242 and others.
11. Defendant, ROOM 960, LLC, (hereinafter, “Room 960”) is a Connecticut limited
liability company whose principal office or place of business is 960 Main Street, Hartford,
CT 06103. Defendant is qualified and doing business in the State of Connecticut.
12. Defendant(s), John Does(s) 1-999, are persons or entities whose identities and
citizenship are currently unknown to Plaintiff, who are liable to the plaintiff for trademark
infringement and other related civil wrongs.
JURISDICTION
13. This action arises under 15 U.S.C. §1121, and 28 U.S.C. §1338(a), in that this
case arises under the Trademark Laws of the United States, 15 U.S.C. §§1051 et seq.
14. Jurisdiction is proper in this court and founded on 17 U.S.C. § 1338(a) and the
doctrine of supplemental jurisdiction. 28 U.S.C. 1367(a).
15. Jurisdiction is founded on diversity of citizenship and the amount in controversy
exceeds the sum of $75,000.00, exclusive of interests and costs. 28 U.S.C. 1332(a).
16. Jurisdiction over related common law claims is conferred under the provisions of
28 U.S.C. § 1338(b) in that said claims are joined with substantial and related claims under
the Trademark Laws of the United States, 15 U.S.C. § 1051 et seq.
17. This Court has specific personal jurisdiction over the defendants because they
have purposefully committed acts within this District from which these claims arise and/or
have committed tortuous acts outside of the District knowing that such acts would cause

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injury in this District. This Court’s general personal jurisdiction over the defendants flows
from their continuous, systematic and routine business contacts within this District and the
State of Connecticut.
VENUE
18. Venue is conferred in this court pursuant to 28 U.S.C. §l391(b)(2) and (c), and
1400(a).
GENERAL ALLEGATIONS
DJ PAULIE and Marks
19. The Plaintiff, Paul Lis, adopted the mark, “DJ PAULIE”, in 1971 and has used it
since 1973 continuously and to the present time in interstate commerce for entertainment
services in the nature of disc jockey services, and for goods, generally as follows,
a.

In 1971 as an intern at the University of Hartford Radio Station, WWUH,

the Plaintiff performed on various shows and productions under the name, “DJ PAULIE”.
b.

In 1973 the Plaintiff started his commercial career in entertainment services

as an intern for radio station WCCC AM & FM, and was then hired on the spot when an
On Air Personality walked off the air. He was told by the manager that it was now his
show. Thus, he opened his show with, "Hello Connecticut and Massachusetts, this is ‘DJ
Paulie’...I'm the new kid here on WCCC.” Thereafter, the Plaintiff, Paul Lis, made guest
appearances billed using the mark, “DJ PAULIE”, at numerous venues including but not
limited to nightclubs, car dealerships, restaurants, amusement parks, and private functions,
and in addition sold goods featuring the mark, “DJ PAULIE”, on hats, t-shirts, posters,
bumper stickers and coffee mugs. See Exhibit A, which is a photo of a t-shirt bearing the
logo still in use to the present time by DJ Paulie for promotions and advertising.

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c.

In 1975-1978 the Plaintiff continued to perform using the mark, “DJ

PAULIE”, in numerous venues including but not limited to radio broadcasting and/or
producing for WPOP, Hartford, CT, and WWCO, Waterbury, CT; he appeared as various
venues across the United States including but not limited to Los Angeles, Las Vegas,
Nashville, Miami, New York; and he worked in various recording studios as a musician,
producer, promoter, publisher and had his own record label, DJ Paulie Music.
d.

In 1979-1989 the Plaintiff made numerous national appearances as “DJ

PAULIE” as a disc jockey, songwriter, producer and musician; during this time period he
was credited with over 1,000 songs he had written or produced; and he made remixes of
numerous Top 10 songs for nightclubs that featured hits by artists on the Billboard
Magazine Charts.
e.

In 1990-2000 the Plaintiff was booked to appear seven nights a week at the

Cool Moose Nightclub in Hartford, Connecticut, billed as “DJ PAULIE”, (Exhibit B)
while still performing and appearing at weddings, schools, corporate functions throughout
the east coast and New England. The Plaintiff was interviewed by the Wall Street Journal
which ran the story on the front page of the publication describing that unique
entertainment venue. (Exhibit C) In addition, the Plaintiff hosted, “DJ Paulie’s World”, a
cable television show interviewing famous celebrities and recording artists; he continued
as master of ceremonies and/or disc jockey at various functions; had numerous
appearances on Fox Channel 61; and made appearances on public television auctions and
numerous charity functions and fundraisers as, “DJ PAULIE”.
f.

In 1993-1995 the Plaintiff was a featured performer at the Clevelander

Nightclub in South Beach, Miami, FL, as “DJ PAULIE”, as well as various nightclubs and

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corporate appearances for large entertainment corporations in New York, Boston, and New
Jersey; and was certified by the state of Florida to teach broadcasting at the Connecticut
School Of Broadcasting in Palm Beach, Florida, where he taught radio and television
broadcasting, production and operations of equipment involved in both fields.
g.

In 1995 the “DJ PAULIE” radio show first aired on the internet at the

University Of Hartford radio station as a weekly program, and grew to a daily program
with an international audience on the internet.
h.

In 1996 the Plaintiff produced and managed various recording projects

under DJ PAULIE MUSIC producing two number one songs in the United Kingdom; the
Plaintiff was contacted by major record labels to act as a master of ceremonies, host and
booking agent to showcase new and existing label artists, such as Clarence Clemons of
New Jersey rocker, Bruce Springsteen's East Street Band.
i.

In 1999, the Plaintiff purchased the domain, “DJPAULIE.COM” and

launched an internet radio website which has been in continuous use to the present time.
j.

In 2001, the Plaintiff formed DJ Paulie Broadcasting, LLC, a Connecticut

Limited Liability company.
k.

After the attack on 9-11 in New York City, the Plaintiff was hired by the

United States Post Office to write the music and produce their official 9-11 Memorial
Fundraising Song, “September Mourn”, for the benefit of the victims’ families. (Exhibit
D) The CD received national accolades from well known individuals, including Senator
Christopher Dodd (Exhibit E) and President Bush (Exhibit F).
20. On May 1, 2008, the Plaintiff filed an application for registration of the mark, “DJ
PAULIE” in the United States Patent and Trademark Office, which was granted

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registration as Reg. No. 3,735,703, on the Principal Trademark Register on January 12,
2010, for use of the mark in entertainment services in the nature of disc jockey services.
Said registration is outstanding and valid and a copy of the registration is attached hereto
as Exhibit G.
21. Plaintiff adopted the mark, “DJ PAULIE’S WORLDWIDE COUNTDOWN”, in
1994 and used it in interstate commerce for entertainment services at least as early as 2006.
22. On May 1, 2008, the Plaintiff filed an application for registration of said mark in
the United States Patent and Trademark Office, which was granted registration as Reg. No.
3,850,538, on the Principal Trademark Register on September 21, 2010, for use of the
mark in entertainment services in the nature of disc jockey services. Said registration is
outstanding and valid and a copy of the registration is attached hereto as Exhibit H.
23. Throughout his 40 year career, DJ Paulie has cultivated and maintained a
wholesome, family oriented image and reputation with G-Rated content in his appearances
and shows, and as such uses edited versions of some popular music selections to maintain
this image and in public appearances. See Exhibit I where DJ Paulie was selected by
Disney Radio to be a talent judge in 2000.
24. Throughout his 40 year career as DJ Paulie the Plaintiff has spent tens of
thousands of dollars in advertising and promotion to build his mark, “DJ Paulie”, into a
nationally recognized brand with a reputation as a preeminent entertainer and producer in
the music and entertainment business, along with its valuable associated good will, and has
used national and international electronic, print and other advertising venues to promote
said goods and services using, “DJ PAULIE” (Ex. G), “DJ PAULIE’S WORLDWIDE
COUNTDOWN” (Ex. H), and “I ‘LOVE’ DJ PAULIE” logo (Ex. A), and the internet

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domain, “DJPAULIE.COM”, i.e., the “DJ PAULIE marks”, where the marks are
prominently displayed on the internet website.
25. Since its formation in 2001, the Plaintiff, DJ Paulie Broadcasting, LLC, has
invested more than $2,000,000.00 in promotion and advertising of the DJ Paulie marks
via the internet radio show, promotional goods, and personal appearances and shows by DJ
Paulie.
26. By virtue of the Plaintiff’s, DJ Paulie, decades-long and extensive use of the DJ
Paulie marks, his advertising and promotional campaigns to promote his goods and
services, and the substantial monies spent and invested therein, DJ Paulie has established
significant good will and valuable rights in, and ownership of, the DJ Paulie marks in
connection with music and entertainment goods and services.
Defendants’ Willful Infringement of the DJ Paulie Marks
And Irreperable Harm to the Plaintiffs
27. Defendants are persons and entities that perform, promote and distribute
entertainment services and goods to the general public utilizing the marks, DJ PAULIE, DJ
PAULY, DJ PAULY D and/or derivatives thereof.
28. On or about 2009 the Defendant, 495 Productions, produced a reality television
series titled “Jersey Shore” that aired on MTV Networks, a Viacom subsidiary, featuring
the defendant, Paul Delvecchio, Jr., performing or promoting himself as a disc jockey with
the moniker, “DJ Pauly” and/or “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, “DJ Paulie” that he had spent decades cultivating and

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acquiring such good will at great expense.

See Exhibit J where defendant Paul

Delvecchio, Jr., was alleged to have assaulted a male hairdresser in 2010.
29. The Jersey Shore show aired to a national audience in late 2009 and had an
immediate negative impact on the Plaintiff’s, DJPAULIE.COM internet ranking due to the
confusion presented by the similar spelling and identical sound of “DJ Pauly” and/or “DJ
Pauly D” with listeners and the internet public, and internet search engines began directing
traffic away from DJPAULIE.COM due to the saturation of the internet content with the
“DJ Pauly and “DJ Pauly D” marks.
30. MTV Networks, or its agents, placed content on the internet with metatags and/or
other internet searchable indicia intentionally utilizing the spelling of “DJ Paulie” to
capture and direct all traffic to their new star performer, “DJ Pauly” and/or “DJ Pauly D”.
31. In less than a month the ranking of the Plaintiff’s website, “DJ PAULIE.COM”
climbed from below 100,000 to over 225,000, which effectively destroyed national
advertiser interest in the internet radio show.
32. In an attempt to stop the confusion and infringement, counsel for the Plaintiff
called a Viacom representative in early 2010 to protest the confusion and infringement of
the DJ Paulie marks, which effort was rebuffed by Viacom.
33. Thereafter counsel for the Plaintiff mailed a cease and desist letter to the Viacom
representative dated March 3, 2010, giving notice to defendants of the marketplace
confusion of “DJ PAULY D”, loss of revenues, unauthorized use of the Plaintiff’s mark,
“DJ PAULIE”, and to cease and desist from the acts of trademark infringement, but
defendants refused to cease such acts and have continued such use and confusion unabated.
See Exhibit K attached and made part hereof.

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34. To date the defendants have ignored the rights of the Plaintiffs, and bulldozed
ahead utilizing their immense market power (Exhibit L – Jersey Shore Cast Opens the
New York Stock Exchange) in advertising and promotion of their star performer, Paul
Delkvecchio, Jr., aka DJ Pauly D, by personal appearances, merchandise, music and video
goods all clearly advertising and promoting “DJ Pauly” and/or “DJ Pauly D”, thereby
further harming the rights and economic interests of the Plaintiffs. Exhibit M (Jersey
Shore First Season uncensored DVD), Exhibit N (Jersey Shore First Season Soundtrack
CD), Exhibit O (2011 Jersey Shore Calendar), Exhibit P (DJPAULYD.COM website
merchandise store) and Exhibit Q (DJPAULY.COM website purchased merchandise).
35. Specifically the defendant, Paul Delvecchio, Jr., is advertised and promoted as the
current resident DJ at the famous Palms Casino in Las Vegas, Nevada, which advertising is
attached as Exhibits R and S.
36. Specifically the defendant, Baskin-Robbins, advertised, promoted and sold disc
jockey software incorporating the mark “DJ PAULY D”, and in association with the
persona of the defendant, Paul Delvecchio, Jr., advertised as “DJ Pauly D” to sell the
merchandise.
37. Specifically the defendant, Hearst, through its famous print and website and
media outlets under the brand, COSMOPOLITAN, advertises, promotes and sells it iPad
COSMO app incorporating the mark “DJ PAULY D”, in association with the persona of
the defendant, Paul Delvecchio, Jr., advertised as “DJ Pauly D” to sell the merchandise,
which advertising is incorporated herein as. Exhibit T.
38. Specifically the defendant, Paul Delvecchio, Jr., was advertised, promoted and
appeared as “DJ PAULY D” at the nightclub, Room960, at 960 Main Street, Hartford,

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Connecticut, on April 22, 2011, which advertising from Room960 is attached as Exhibit
U.
39. On February 25, 2010, the Defendant, Paul Delvecchio, Jr., filed an application
for registration of the mark, “DJ PAULY D”, in the United States Patent and Trademark
Office, Ser. No. 77929322, for entertainment services in the nature of disc jockey services,
which was first refused registration by the United States Trademark Examiner on the basis
of likelihood of confusion with “DJ PAULIE”, on May 14, 2010, and after amendment
refused a second time on November 24, 2010, and after further amendment, refused a third
time on June 9, 2011, which office action refusals are attached as Exhibit V.
40. On February 5, 2010, the Defendant, Paul Delvecchio, Jr., filed a second
application for registration of the mark, “DJ PAULY D”, in the United States Patent and
Trademark Office, Ser. No. 77929416, for entertainment services in the nature of live
performances by Paul Delvecchio, Jr., aka, “DJ Pauly D”, and for appearances as a Reality
TV star delivered by means of a Reality TV show, which was first refused registration on
the basis of likelihood of confusion and other defects, by the Trademark Examiner on
November 26, 2010, and after amendment refused a second time on November 24, 2010,
and after amendment refused a third time on June 9, 2011, and said refusals are attached as
Exhibit W.
FIRST CLAIM FOR RELIEF
(Violation of 15 U.S.C. §1051 et seq – Lanham Act Trademark Infringement)
41. Paragraphs 1 through 40 are incorporated herein as though set forth in their
entirety.
42. The Defendants have infringed Plaintiff’s federally registered marks in interstate

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commerce by various acts under the names and marks, DJ PAULIE, DJ PAULY and/or DJ
PAULY D, or derivatives thereof, by promoting, selling, offering for sale and advertising
services and goods under the aforesaid names and marks, and said use of said names and
marks is without the permission or authority of Plaintiff, and said use by defendants is
likely to cause confusion, to cause mistake and to deceive.
43. Defendants’ alleged acts of trademark infringement and unfair competition have
been committed with the intent to cause confusion, mistake and to deceive.
44. Defendants, by promotion, production, performance and distribution of goods and
services bearing the marks DJ PAULIE, DJ PAULY and/or DJ PAULY D have unlawfully
and willfully infringed Plaintiff’s marks in violation of Plaintiff’s exclusive rights therein.
45. Plaintiff has at least 37 years of use, advertisement and good will in the mark,
“DJ PAULIE”, and since 2001 invested an additional $2,000,000.00 in capitalization and
promotion of the DJ Paulie marks through the internet radio domain, DJPAULIE.COM,
and upon use by the defendants of the infringing and confusing marks, DJ PAULIE, DJ
PAULY and/or DJ PAULY D and derivatives, has lost substantial revenue from
Defendants’ unlawful and willful infringement of Plaintiff’s trademarks.
46. The actual infringement and confusion by the defendants, and subsequent loss of
good will to “DJ PAULIE” and internet ranking to “DJPAULIE.COM” has caused the
Plaintiff to expend additional sums of money to attempt to establish a new internet radio
brand, “YOUSHOOK.COM”.
47. Defendants’ use and infringement of the DJ Paulie marks usurped the public’s
identification of the Plaintiff as the originator of the marks, thereby confusing the public
and causing the Plaintiff to suffer irreparable damages and lost profits.

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SECOND CLAIM FOR RELIEF
(Violation of 15 U.S.C. § 1125 – Lanham Act Trademark Dilution)
48. Plaintiff hereby re-alleges, as if fully set forth herein, the allegations of
paragraphs 1 through 47 inclusive of Count One.
49. The DJ Paulie marks are strong and distinctive, and have long been in usein
connection with the entertainment services of the Plaintiff since at least 1973, and have
been the subject of substantial advertising and promotion throughout the United States and
internationally, is widely recognized by consumers and those in the trade, has been in
substantially exclusive use by Plaintiff, and is federally registered, as alleged above. The
acts of defendants alleged herein were commenced at least thirty years after Plaintiff's
mark became famous.
50. Defendants have made use of DJ PAULIE, DJ PAULY and/or DJ PAULY D or
their derivatives as mark(s) or trade name(s) in connection with the goods and services
which defendants have sold in United States interstate commerce. Defendants’ use of DJ
PAULIE, DJ PAULY and/or DJ PAULY D or their derivatives as mark(s) or trade name(s)
creates a likelihood of association with Plaintiffs famous mark “DJ PAULIE” arising from
its similarity to Plaintiff's famous mark. Defendant's acts are in violation of Lanham Act §
43(c) in that they are likely to cause dilution by impairing the distinctiveness of and by
harming the reputation of Plaintiff's famous mark, “DJ PAULIE”, all to the irreparable
injury and damage to the Plaintiff.
51. Defendants have committed these acts willfully and with the intent to trade on the
recognition of Plaintiff's mark and to harm the reputation of the Plaintiff’s marks.

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52. Defendants, in unlawfully and willfully infringing Plaintiff’s marks, have created
a likelihood of confusion among the public as to the original source of the Plaintiff’s marks
and their respective goods and services, and have contributed to the dilution of the
distinctive quality of Plaintiff’s marks in the marketplace.
53. Defendants, by their unauthorized appropriation and use of Plaintiff’s marks, have
and are engaging in acts of unfair competition, unlawful appropriation, unjust enrichment,
wrongful deception of the purchasing public, and unlawful trading on Plaintiff’s good will
and the public’s acceptance of Plaintiff’s services, all to the Plaintiff’s irreparable damage.

THIRD CLAIM FOR RELIEF
(Violation of 15 U.S.C. § 1125(a) – Federal Unfair Competition)
54. Plaintiff hereby re-alleges, as if fully set forth herein, the allegations of
paragraphs 1 through 47 inclusive of Count One.
55. This action for unfair competition is a substantial and related claim to Defendants’
infringement of Plaintiff’s marks and pursuant to 28 U.S.C. § 1338(b), the court has and
should assume pendent jurisdiction of this claim.
56. Defendants, in unlawfully and willfully infringing Plaintiff’s marks, have created
a likelihood of confusion among the public as to the original source of the Plaintiff’s marks
and their respective goods and services, and have contributed to the dilution of the
distinctive quality of Plaintiff’s marks in the marketplace.
57. Defendants, by their unauthorized appropriation and use of Plaintiff’s marks, have
and are engaging in acts of unfair competition, unlawful appropriation, unjust enrichment,
wrongful deception of the purchasing public, and unlawful trading on Plaintiff’s good will

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and the public’s acceptance of Plaintiff’s services, all to the Plaintiff’s irreparable damage.

FOURTH CLAIM FOR RELIEF
(Unfair Competition by Infringement of Common Law Rights)
58. Plaintiff hereby re-alleges, as if fully set forth herein, the allegations of
paragraphs 1 through 47 inclusive of Count One.
59. Said acts of defendants constitute unfair competition and infringement of the
common law rights of plaintiff in said marks.
60. Continuously since at least 1973 the Plaintiff has used the mark, “DJ PAULIE”,
in commerce in the trade area of entertainment services to identify his services and to
distinguish them from those provided by others, prominently promoting and displaying the
mark “DJ PAULIE” in various forms of print and broadcast advertising, and by such use
said mark, “DJ PAULIE”, has developed a secondary and distinctive trademark meaning to
purchasers of services identified to and only provided by Plaintiff, and said use by
defendants in the same trade area is likely to cause and has caused confusion to said
purchasers.
61. This action for unfair competition is a substantial and related claim to Defendants’
infringement of Plaintiff’s marks and pursuant to 28 U.S.C. § 1338(b), the court has and
should assume pendent jurisdiction of this claim.

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FIFTH CLAIM FOR RELIEF
(Violation of Connecticut Unfair Trade Practices Act –
Conn. Rev. Stat. 42 §110a et seq)

62. Plaintiff hereby re-alleges, as if fully set forth herein, the allegations of
paragraphs 1 through 47 inclusive of Count One.
63. This action for violation of the Connecticut Unfair Trade Practices Act is a
substantial and related claim to Defendants’ infringement of Plaintiff’s trademarks
pursuant to 28 U.S.C. § 1338(b), the court has and should assume pendent jurisdiction of
this claim.
64. Defendants’ unauthorized use of Plaintiff’s trademarks in connection with
personal or broadcast performances in entertainment services constitutes violation of the
Connecticut Unfair Trade Practices Act, including without limitation:
a.

Passing off goods or services as those of another;

b.

Causing confusion or misunderstanding as to source, sponsorship, approval

or certification of goods or services;
c.

Causing confusion or misunderstanding as to affiliation, connection, or

association with, or certification by, another; and
d.

Representing that goods or services have sponsorship, approval,

characteristics, ingredients, uses, benefits, or quantities that they do not have or that a
person has as a sponsorship, approval, status, affiliation, or connection which he does not.
65. Defendants multiple immoral, deceptive and/or unscrupulous acts have infringed
the Plaintiff’s marks causing confusion and mislead the public.

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66. Defendants’ actions are intended and/or operate to confuse the public.
67. Plaintiff’s sale of his own services is prejudiced by Defendants’ infringement and
dilution of Plaintiff’s marks, all to Plaintiff’s irreparable damage.

ALLEGATION OF DAMAGES
68. By reason of the acts of the defendants alleged herein, Plaintiff has and will suffer
damage to its $2,000,000.00 business investment, reputation and good will and the loss of
sales and profits Plaintiff would have made but for the willful acts of defendants.
69. Defendants threaten to continue to do the acts complained of herein, and unless
restrained and enjoined, will continue to do so, all to Plaintiff's irreparable damage. It
would be difficult to ascertain the amount of compensation which could afford Plaintiff
adequate relief for such continuing acts. Plaintiff's remedy at law is not adequate to
compensate it for injuries incurred and threatened.

WHEREFORE, the Plaintiffs pray:
A. Defendants be enjoined during the pendency of this action and permanently
thereafter from appropriating and using the DJ Paulie marks;
B. That this Court grant an injunction pursuant to the powers granted it under 15
U.S.C. §1116, enjoining and restraining defendants and their agents, servants and
employees during the pendency of this action and permanently thereafter from directly or
indirectly using the name DJ PAULIE, DJ PAULY, DJ PAULY D or any other mark,
word, or name similar to Plaintiff's marks which is likely to cause confusion, mistake or to
deceive and (2) continuing any and all acts of unfair competition as alleged herein.

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C.

That this Court, pursuant to the power granted it under 15 U.S.C.A. 1118, order

that all labels, signs, prints and advertisements in the possession of defendants bearing the
marks DJ PAULIE, DJ PAULY, DJ PAULY D or any other mark, word, or name similar
to Plaintiff's marks be delivered up forthwith and destroyed.
D.

That this Court, pursuant to the power granted it under 15 U.S.C.A. 1118, order

that all metadata, or other means of identification of the DJ Paulie marks on the internet, in
use or under the control of defendants or their agents, be removed from all internet uses,
websites and advertisements bearing the mark DJ PAULIE, DJ PAULY, DJ PAULY D or
any other mark, word, or name similar to the DJ Paulie marks.
F.

That the defendants be required to account to Plaintiffs for any and all profits

derived by defendants from the sale of goods or services and for all damages sustained by
Plaintiff by reason of said acts of infringement and unfair competition acts complained of
herein.
F.

That this Court award Plaintiffs treble the amount of actual damages suffered by

Plaintiff, including pre-judgment and post-judgment interest.
G.

That this Court award punitive and exemplary damages against defendants and in

favor of Plaintiffs by reason of defendants’ willful infringement.
H.

That costs of this action be awarded plaintiff.

I.

That this is an exceptional case and that Plaintiff be awarded its reasonable

attorney's fees.
J.

That this Court grant such other and further relief as it shall deem just.

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