Clemente Properties, Inc. v. Pierluisi-Urrutia

11. 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 affirmed dismissal of all claims against the Puerto Rico Convention District Authority, all Lanham Act claims against the Commonwealth and individual officials, and all Takings Clause claims.

Reasons for the Decision

While the Court held that license plates bearing Clemente's name were used "in commerce" for Lanham Act purposes, the government's use as a commemorative measure was not actionable infringement. Government officials were complying with their official duties, and the Lanham Act cannot be read to supersede sovereign immunity. The use of Clemente's image did not constitute a categorical taking because plaintiffs could still derive economically beneficial use from the mark.