The U.S. Supreme Court on Monday turned away an appeal from the three sons of baseball legend Roberto Clemente over Puerto Rico's use of his name and image on commemorative vehicle plates and registration tags. Certain Lanham Act claims against Puerto Rico officials in their personal capacities remain for further proceedings in lower court. Roberto Clemente Jr., Luis Roberto Clemente and Roberto Enrique Clemente had asked the justices to revive claims that lower courts had already rejected.
A Program Born From Tragedy and Legacy
Roberto Clemente, a Puerto Rico native and baseball Hall of Famer, played 18 seasons for the Pittsburgh Pirates starting in 1955, earning 15 All-Star selections and two World Series championships before his death at age 38 in a 1972 plane crash while delivering humanitarian aid to earthquake victims in Nicaragua. According to Reuters, Puerto Rico issued commemorative license plates and registration tags bearing his image in 2022 without permission from his sons, who own two companies they say protect his trademark, legacy and philanthropy. The sons alleged the government's move violated constitutional protections against the taking of trademark rights, and Reuters reports they claimed Puerto Rico's use of Clemente's likeness generated $15 million.
Court records reviewed by law.justia.com show the lawsuit also named two corporations controlled by the sons as plaintiffs, and the complaint states that one of those companies, Clemente Properties, had registered the “Roberto Clemente” trademark with the U.S. Patent and Trademark Office. Per the same court record, proceeds from the commemorative plates and tags were set aside to fund a sports district bearing Clemente's name.
How the Fee Program Worked
The program traced back to Joint Resolutions Nos. 16 and 17, which Puerto Rico enacted on August 5, 2021, according to an opinion from the First Circuit posted on caselaw.findlaw.com. For calendar year 2022, Joint Resolution No. 16 required any driver acquiring a new Puerto Rico license plate to purchase a special commemorative plate for an additional $21, the opinion states. Joint Resolution No. 17 added a mandatory $5 surcharge to registration tags issued that same year. Reuters reports that Puerto Rico ended the commemorative plate and tag program at the end of 2022.
The sons sought $45 million in damages and $3.15 million in trademark-infringement compensation, Reuters reports, along with an order blocking further use of their father's likeness on plates and tags. U.S. District Judge Gina Mendez-Miro dismissed the case in San Juan, and the 1st U.S. Circuit Court of Appeals in Boston partially affirmed that dismissal, rejecting the sons' unconstitutional-taking claim, according to Reuters.
A Narrower Path Still Open in Lower Court
The First Circuit's written opinion, detailed by law.justia.com, shows the appellate panel went further than a flat rejection: judges vacated dismissal of certain Lanham Act claims brought against individual Puerto Rico officials in their personal capacities and sent those claims back for further proceedings, even as they otherwise affirmed the dismissal.
At the Supreme Court, the sons' lawyers argued that the lower courts wrongly concluded the Fifth Amendment does not automatically apply to intangible property such as trademarks, Reuters reports. Left unanswered, the lawyers wrote, the First Circuit's ruling would invite government to take trademarks on demand, checked only by a multi-factor balancing test that allows government to destroy much in value and pay nothing in return, according to the Reuters account.
Puerto Rico countered that the sons' Fifth Amendment argument overstated the breadth of the First Circuit's decision, telling the court that the appellate ruling did not categorically exclude intangible property from automatic Fifth Amendment protection, per Reuters. The commonwealth said the lower court simply resolved the issues by applying existing precedent to the facts of the case. The Supreme Court's order declining to hear the appeal did not include its reasoning, Reuters reports.
