Federal appeals court says gov’t officials can be sued for misusing Roberto Clemente’s image

In reviving the Lanham Act claims, the U.S. Court of Appeals for the First Circuit squarely rejected the district court’s conclusion that government-issued license plates and vehicle inspection stickers cannot qualify as “goods or services” for the purposes of federal trademark law. (Facebook)

By THE STAR STAFF

The U.S. Court of Appeals for the First Circuit has revived several trademark claims filed by the sons of baseball legend Roberto Clemente, ruling that Puerto Rico officials may be sued personally for alleged misuse of Clemente’s name and image on government-issued commemorative license plates and vehicle inspection stickers.

In a lengthy and sharply divided opinion, the court reinstated the Clemente family’s claims under key provisions of the Lanham ActB -- specifically trademark infringement, false association/endorsement, and trademark dilution. The panel, however, upheld the dismissal of all claims against the Commonwealth of Puerto Rico itself and its agencies on sovereign immunity grounds.

The 3-0 ruling sends portions of the high-profile case back to the federal district court in San Juan for further proceedings.

“Having addressed a barrage of overlapping arguments from both appellants and appellees, we pause to check the score. We affirm as to the district court’s dismissal of all claims against the Authority and of all Lanham Act and Takings Clause claims against the Commonwealth and the individual officials in their official capacities,” the middle court said in a recent ruling. “We also affirm dismissal of the false advertising claim, 15 U.S.C. § 1125(a)(1)(B), and the takings claim asserted against the Commonwealth officials in their personal capacities. But we vacate the dismissal of claims under 15 U.S.C. §§ 1114(1), 1125(a)(1), and 1125(c) as to the individual Commonwealth officials in their personal capacities. We remand to the district court for further proceedings.”

The dispute began after the Puerto Rico Legislature approved two 2021 measures requiring drivers obtaining new license plates in 2022 to pay an extra $21 for a commemorative Roberto Clemente plate, as well as a mandatory $5 charge for a Clemente-themed registration tag.

The Clemente family -- Roberto Clemente Jr., Luis Roberto Clemente and Roberto Enrique Clemente -- along with two family-controlled corporations, allege the government used Clemente’s name, image and iconic number without permission. They further argue that citizens mistakenly believed the family endorsed the government program or received proceeds, sparking public backlash.

According to the complaint, the new revenue streams were used to fund the “Roberto Clemente Sports District,” a government-managed project that the family says supplants and undermines Clemente’s original vision for the privately run Ciudad Deportiva youth sports complex.

In reviving the Lanham Act claims, the First Circuit squarely rejected the district court’s conclusion that government-issued license plates and vehicle stickers cannot qualify as “goods or services” for the purposes of federal trademark law.

“Courts have recognized trademark claims involving license plates many times,” the panel wrote, adding that the commonwealth “collected money in exchange for products displaying Clemente’s name and image,” making them actionable under the statute.

The court also found the Clementes plausibly alleged actual consumer confusion, noting public criticism was directed at the family under the mistaken belief they financially benefited from the program.

Significantly, the panel recognized that a false endorsement claim may proceed even when the mark at issue involves a person’s identity rather than a traditional trademark -- a point the district court had overlooked.

The panel held that Puerto Rico and officials sued in their official capacities are immune from monetary liability under the Lanham Act, concluding that Congress did not validly abrogate state or territorial immunity for trademark claims.

But immunity does not extend to officials sued in their personal capacities. Because the commonwealth defendants failed to properly raise qualified immunity below -- except as to one claim already dismissed -- the court ruled that the surviving Lanham Act claims may continue against the officials individually.

Not all claims survived. The First Circuit upheld dismissal of the plaintiffs’ false advertising claim, finding the family failed to allege that Puerto Rico engaged in “commercial advertising or promotion,” a required element under federal law.

The panel also rejected the family’s Fifth Amendment takings claim, ruling that the government’s alleged trademark infringement -- even if intentional -- does not constitute a “categorical taking” of property under Supreme Court precedent.

The judges emphasized that trademarks, as intangible property, are not subject to the same per se takings rules as physical property.

The court also affirmed the dismissal of all claims against the Puerto Rico Convention Center District Authority, finding the Clementes failed to articulate how the Authority’s conduct -- largely limited to statutory responsibilities -- constituted infringement or a taking.

Chief Judge Jeffrey Howard Barron agreed with nearly the entire opinion but dissented in part, arguing the officials should also be protected by qualified immunity.

Barron wrote that no “clearly established” law indicated a government’s issuance of official license plates could violate the Lanham Act, and thus officials should not face personal liability.

The case now returns to the U.S. District Court for Puerto Rico, where litigation will continue on the surviving trademark infringement, false endorsement, and dilution claims against the individual officials personally.

The outcome could have significant implications for how governments use the names and images of public figures -- especially beloved icons like Clemente -- in fundraising or commemorative campaigns.