Overview
Lauren Emerson (Partner & Lead counsel), Cameron Reuber (Partner), and Vera Glonina (Associate) recently represented heirs of a prominent New Jersey civil rights activist, the late Russell Graddy, and helped them successfully resolve a commercial dispute concerning the unauthorized use of Mr. Graddy’s name and the family’s intellectual property. The civil action was styled Food Service Solutions LLC et al v. MR. Gs MYMY LLC et al, 2:24CV08513 (DNJ).
Russell Graddy, known locally simply as “Mr. G”, was a prominent African American civil rights activist, successful businessman, and beloved leader of the Paterson, New Jersey community. Mr. G and his family operated the iconic Mr. G’s Diner in Paterson, which received widespread acclaim, inclusive of special features in multiple publications as well as thousands of positive reviews.
After Mr. Graddy’s passing in December 2021, his family sold the Paterson diner facility and real estate to a local developer before relocating to Catskill, New York to begin preparations to reopen there. Notably, the sale did not include any intangible assets associated with Mr. Graddy, including intellectual property. The new owners subsequently sought the family’s permission to open a new diner by the same name, but the Graddy family declined. Unwilling to take “No” for answer, the new owners persisted in moving forward with plans to stage a “Grand Re-Opening” of the Mr. G’s Diner at the same location as the original, but with completely new ownership and no connection whatsoever to the Graddy family.
This “re-opening” of a copycat diner that never previously existed was actively promoted on social media and included various instances of the name and likeness of Mr. Graddy being exploited for commercial gain, often with the copycat diner purporting to trade off the consumer goodwill earned by the original Mr. G’s. This proved to be the last straw for Mr. Graddy’s heirs, who sought counseling and assistance from Leason Ellis.
Ultimately, after diplomatic efforts failed, Leason Ellis prepared and filed a complaint for, inter alia, trademark infringement, false advertising, and misappropriation of right of publicity. Concurrently therewith, a motion for preliminary injunction was filed on the same day as the copycat diner’s “re-opening” celebration. Shortly thereafter, the new property owners decided to comply with the family’s wishes and voluntarily ceased all business activities and closed the diner. The parties eventually settled their differences regarding who owns the exclusive rights to Mr. G’s name, image, likeness, and trademark rights: Mr. Graddy’s family.
5 U.S.C. § 1125(A). See United Drug Co. v. Theodore Rectanus, Co., 248 U.S. 90, 97 (1918).
15 U.S.C. § 1127.
