Clemente Properties, Inc. v. Pierluisi-Urrutia
**Citation:** 2026 WL 125574 (1st Cir.)
Relevant Facts
Clemente Properties, Inc., 21 In Right, Inc., Roberto Clemente Jr., Luis Roberto Clemente, and Roberto Enrique Clemente filed suit against Puerto Rico's Governor, Secretary of the Department of Transportation, Puerto Rico Convention District Authority, and other government officials.
The Commonwealth of Puerto Rico issued commemorative license plates and registration tags bearing the name and image of Roberto Clemente (deceased baseball legend) without authorization.
The license plates and tags were marketed in connection with a planned sports district named after Clemente.
The plaintiffs alleged they held rights to Clemente's name and image through intellectual property rights.
Legal Issues
Whether the government's use of Clemente's name and image on license plates constituted trademark infringement under the Lanham Act; whether the license plates were used "in commerce" and "in connection with goods and services"; whether the use constituted trademark dilution; whether the government's actions constituted an unconstitutional taking; and whether sovereign immunity barred plaintiffs' claims.
Positions of the Parties
**Plaintiffs (Appellants):** Argued the government's unauthorized use infringed their trademark rights, diluted the trademark, and constituted a taking without just compensation.
**Defendants (Government):** Argued license plates are not "goods or services" under the Lanham Act; the use was governmental and commemorative; sovereign immunity protected state officials; and no cognizable property right existed to trigger takings protection.
Decision by the Court
The Court of Appeals affirmed in part and reversed in part the district court's dismissal. It vacated the dismissal of the trademark infringement, false endorsement and dilution claims under the Lanham Act against the government officials sued in their personal capacities, and remanded those claims. It affirmed dismissal of the claims against the Commonwealth, the Puerto Rico Convention Center District Authority and the officials in their official capacities (sovereign immunity), the Lanham Act false-advertising claim, and the Takings Clause claims.
Reasons for the Decision
The Court held that commemorative license plates and registration tags can be goods for Lanham Act purposes, that government activity is not presumptively noncommercial, and that the plaintiffs plausibly alleged that the public could believe the Clemente family endorsed or benefited from the program. Sovereign immunity bars the claims against the Commonwealth and the officials in their official capacities, but not the claims against the officials in their personal capacities. The use of Clemente's image did not constitute a categorical taking because plaintiffs could still derive economically beneficial use from the mark.