Clemente Properties, Inc. v. Urrutia, No. 22-1373 (GMM), 2023 WL 6201397, -- F. Supp. 3d --- (D.P.R. Sept. 22, 2023)
Plaintiffs own Roberto Clemente’s IP rights and a
registration for ROBERTO CLEMENTE for “figurines, statues and statuettes made
of non-precious metal; beer cans made of non-precious metal sold empty.” (The
district court doesn’t appear to care about what the registration is for; I had
to look it up.) They sought at least $45 million from the government of Puerto
Rico for issuing a commemorative license plate for the fiftieth anniversary of
Roberto Clemente’s “Hit 3000,” at $21/plate. There was also a mandatory $5
charge for a commemorative vehicle certificate tag that was yellow, had the
figure of Roberto Clemente with the name “Clemente,” the number “21,” the
number “50,” and phrase “3000 hits.” The revenues were transferred to the
Roberto Clemente Sports District Fund for the use of the Department of Sports
and Recreation.
Plaintiffs brought trademark and related claims, including
takings claims, all of which the court dismissed.
The First Circuit has repeatedly held that Puerto Rico is
entitled to Eleventh Amendment sovereign immunity, which Congress has not
successfully overridden with respect to Lanham Act claims. Nor had the
Commonwealth waived its immunity. “While Plaintiffs seek prospective relief,
they have provided the Court with no basis from which it can infer any
possibility of an ongoing violation of federal law.” For trademark, any request
was moot since the law requiring the sale of license plates and license labels
expired by its own terms on December 31, 2022.
Anyway, there was no viable claim. (Sometimes less is more.
It can’t have helped that plaintiffs claimed that the use infringed tarnished
not only the RC trademark, but also the “trademarks, names and likeness of his
sons as individual businessmen and representatives of the mark.”)
The court began with the proposition that Lanham Act claims
require both “use in commerce” and “commercial use.” Even accepting the
validity of the registration, plaintiffs failed to allege a use of the mark in
commerce “in connection with” “goods or services.” Although they alleged that
they were going to sponsor their own license plates, they didn’t actually
allege that they had done so. The confusion inquiry is “not applied to assess
confusion in the abstract; it is focused on the likelihood that commercially
relevant persons or entities will be confused.”
License plates and vehicle certificate tags are issued by
the Department of Transportation. They are “governmental property intended
primarily to serve a governmental purpose, and inevitably they will be
associated with the state that issues them.” Thus, “not only are these not the
classes of products or services that trademark law protects, but issuing motor
vehicle license plates and tags cannot be considered commercial use, as it is a
clear government activity.”
Plus, the plates and tags depicted Clemente in the context
of “an event of historical significance for both Puerto Rico and Major League
Baseball.” The court doesn’t explain its reasoning but it seems to think this
bolsters the conclusion that this was not a trademark use.
False advertising: No Lexmark standing for want of
proximate cause. Plus, there was no commercial advertisement or promotion. The plates and tags couldn’t be considered ads.
Further, depicting Clemente in historical context was descriptive, not
misleading. Although plaintiffs alleged that defendants implied, by using
Clemente’s name, that funds raised would go to them, as owners of the mark,
those were “conclusory statements of unspecified injury and of the type that
was not intended to be protected by the Lanham Act.”
Takings: Even if trademarks are protected by the Takings
Clause, sovereign immunity still applied. Also there was no expropriation of
the trademark here. There was no
permanent physical invasion nor a complete deprivation of all economically
beneficial use. “Plaintiffs remain free to use their trademarks as they wish.”
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