False endorsement claim can proceed against gov't issued license plates and gov't facility named for Roberto Clemente

Clemente Properties, Inc. v. Pierluisi-Urrutia, --- F.4th ----, 2026 WL 125574, No. 23-1922 (1st Cir. Jan. 16, 2026)

The representatives of the family of a famous deceased Puerto Rico baseball player, Roberto Clemente, sued the Commonwealth of Puerto Rico and several related defendants over the use of Clemente’s name and image on commemorative license plates and registration tags. The court of appeals partially reversed the judgment in favor of defendants on the trademark claims, showing the breadth of “use in commerce” compared to “commercial advertising and promotion.”

ROBERTO CLEMENTE is registered for various promotional goods and charitable/educational services, though the court of appeals didn’t note the goods and services; it hardly matters given the theories at issue.

Ciudad Deportiva Roberto Clemente operates a youth sports facility (of the same name) on land donated by the Commonwealth, but is in poor repair (plaintiffs blame the Commonwealth); the complaint didn’t make clear what its relationship was with plaintiffs. Appellants authorized Ciudad Deportiva “to use the trademark, name and likeness of Roberto Clemente” on commemorative vehicle license plates.

Then, in 2021 the P.R. legislature enacted new laws requiring any driver who acquired a new Puerto Rico license plate in calendar year 2022 to purchase a special plate commemorating the 50th anniversary of Roberto Clemente’s 3,000th hit for $21 extra; any member of the public who did not need to acquire a new license plate could also pay $21 to exchange their existing license plate for the commemorative plate. Another law added a mandatory $5 surcharge to registration tags issued in calendar year 2022 in return for a commemorative tag. Both the plate and tag had an image of Roberto Clemente; the words “Clemente,” “anniversary,” and “3000 hits”; and the numbers “21” and “50.” The money was to go in “the Roberto Clemente Sports District Fund,” for the exclusive use of the Department of Sports and Recreation. Drivers who got registration tags were also presented the opportunity to make a donation to the Roberto Clemente Sports District Fund.

“Puerto Rico’s citizenry reacted negatively to the new commemorative license plates and registration tags, and the public believed that appellants were receiving some financial benefit for the charges associated with the commemorative items.” Also, the Transportation Secretary made a televised statement, in January 2022, that the funds collected for commemorative plates and tags would go to “the Roberto Clemente Foundation.” And a permit issued by the Department of Transportation and Public Works lists the $5 surcharge for vehicle registration tags next to the words “Roberto Clemente Fund.”

Then the legislature transferred Ciudad Deportiva’s land back to the Commonwealth for the purpose of building the “Roberto Clemente Sports District” “as a sports and recreational facility for the enjoyment of Puerto Ricans and sports tourism.” Plaintiffs alleged that the law communicates “some kind of tacit endorsement of Roberto Clemente to this project” by expressly referring to “his vision of building a Sports City for the benefit of our young people and future generations.” The court of appeals, notably, is open to this theory even though it seemingly doesn’t think much of the lawyering.

The district court found that government-issued plates and permits weren’t use “in connection with goods or services.” But they were: license plates and registration tags are goods, and the Commonwealth collected money for them; the PTO even has a classification for license plates. Also, to the extent that the parties disputed “use in commerce,” the court of appeals suggested that the Second Circuit was right that the definition in the Lanham Act only applied to acquisition of rights, not to infringement—missing the Supreme Court’s fairly clear instruction to the contrary in Hetronic.

“While trademark owners suing state governments have generally lost, neither the district court nor the Commonwealth Defendants cite a case suggesting that government activities are inherently, or even presumptively, non-commercial.” Accepting the well-pleaded allegations of the complaint, “the Commonwealth Defendants did not use Clemente’s name or image simply to offer commentary about Clemente or to conduct some administrative government task.”

What about naming the Sports District after Clemente? Well, those allegations were “tied” to the other claims because “[p]roceeds from the sale of license plates and registration tags were set aside to raise money for the Sports District. And the Commonwealth Defendants invoked Clemente’s name when soliciting donations for the Roberto Clemente Sports District Fund.” If an infringement claim can proceed against “defendants who use someone’s name or image to solicit donations in support of public non-profit services,” which they can—citing United We Stand, about political parties—then it can proceed against the Sports District on remand.  

The 43(a)(1)(A) false association claim survived. Plaintiffs satisfied Lexmark by properly alleging reputational harm: “appellants’ business interests in licensing the Clemente mark for merchandise or other projects were plausibly impacted by this public blowback. This is especially so where appellants’ business reputation is built in part on an association with charitable endeavors, and the public backlash was in response to the perceived extortionate nature of the commemorative license plates and registration tags, goods that all Puerto Rico residents who needed new plates or tags in 2022 were forced to purchase.”

True, plaintiffs didn’t assert valid rights in Clemente’s image—they can’t just claim a trademark in “any pictorial depiction of Roberto Clemente.” However, they can still bring a false endorsement claim without having rights in a specific image. Use of Clemente’s likeness, the court said, was a “symbol” or “device” under 43(a). (This is an anachronistic reading of the meaning of the terms at the time, but that ship has long sailed.)

And likely confusion was plausible. This wasn’t like the use in the case relied on by the district court: a calendar that featured many “[p]hotographs of baseball, its players and assorted memorabilia” where Babe Ruth was just “one ballplayer among the many featured in the calendar.” The use of Clemente’s name and image in connection with a project whose proceeds were to be collected for “the Roberto Clemente Sports District Fund” was different enough to make confusion plausible, especially given the allegations of actual confusion and allegations that Clemente “was a highly recognizable figure whose name and image appellants had licensed for use in a different license plate program.” The Commonwealth expected to collect $15 million from the program, which could be recovered under the Lanham Act. (I have … questions about this statement. After all, the reason for the backlash was that people who needed a license plate during that year had no choice but to pay. Isn’t there a causation problem? Voluntary purchasers aside, as to whom I can see a disgorgement argument, confusion can’t have played any role in the payments made by people following the law that required them to have plates/permits.)

The court also therefore revived the dilution claim. (Household name fame as a mark for goods and services, as opposed to as a figure of baseball history, seems unlikely.)False advertising failed, though, because “commercial advertising or promotion” is substantially narrower than “use in commerce”/“use in connection with goods and services.” At most, the Commonwealth used “methods that communicate information to the public,” but that didn’t make its speech “commercial speech.”

Nor did the alleged infringement constitute a Fifth Amendment taking of appellants’ property. (There’s a further issue the court of appeals didn’t mention, consistent with its lack of interest in the goods/services specified in plaintiffs’ registration: Because of their failure to plead any “trademark” other than the registered matter, their trademark doesn’t cover the uses at issue even if there’s a false endorsement. So whatever exclusive right the registered trademark grants, the Commonwealth’s use shouldn’t be considered within the scope of that right.)

Plaintiffs argued that the Commonwealth engaged in a “categorical taking” because a trademark is property and the Commonwealth violated plaintiffs’ right to exclude. A “categorical taking” doesn’t require a contextual inquiry; a “regulatory taking” requires balancing to figure out if the government did so much damage to the value of property that it ought to pay. A non-physical, regulatory taking is only “categorical” where it “denies all economically beneficial or productive use” of the plaintiff’s property.

This case obviously wasn’t a categorical taking. First, physical invasion (the usual categorical taking) wasn’t possible for intangible rights. Second, the Commonwealth wasn’t alleged to have deprived them of all economically beneficial use of their marks.

Plaintiffs argued that (1) they had a right to exclude others from using the mark and (2) the commonwealth violated that right to exclude, drawing on recent Supreme Court precedent that requiring landowners to allow union organizers access to their land was a taking. But isolated instances of infringement didn’t equate to preventing a trademark owner from exercising their right to exclude, the way that the state’s labor law had prevented landowners from suing organizers for trespass.

Also, a temporary and partial physical incursion is still a physical incursion: “In the case of physical property, allowing even one individual to temporarily occupy or possess the property physically displaces the owner from possession or control of that portion of the property, however small.” But “[u]se of a trademarked word or image does not necessarily have the same effect.” (Note: I think the court should be talking about infringement, not “use.” Not all use of a trademark is within the scope of trademark “property” right, and the court worsens its point w/r/t takings analysis by not being more precise.)

It's not just that the TM owner can keep using the mark in the TM use sense during government infringement. It’s that it can still keep using the right in the “property right” sense during infringement: it can still sue the government, and other alleged infringers, because it still has that right. So the value of the right has not been completely destroyed, as it would have to be for a nonpossessory act to constitute a categorical taking. So balancing it is.

Also, interestingly:

There is special reason for caution in the trademark context: a trademark owner’s right to exclude is less robust when compared to other forms of property—and even when compared to other forms of intellectual property. Thus the “background limitations” on any property interest in trademarks might well be exceptions that swallow the rule, or at least require more careful assessment than the more straightforward limitations that apply in the case of physical property.

(Perhaps another way to say it: infringement is neither trespass nor nuisance; it is infringement, which is why intangible rights have to be analyzed differently.)

However, Puerto Rico had sovereign immunity, so defendants couldn’t be sued in their official capacities. The Lanham Act purports to abolish state sovereign immunity, but the Supreme Court found that unconstitutional for want of sufficient tailoring to the prevention of constitutional violations by the States, and Puerto Rico is, per circuit precedent, treated like a state for sovereign immunity purposes “unless the language of a particular statute demands [a different] result” or “some other compelling reason” exists. 

What about Section 1122(a) of the Lanham Act?  Section 1122(a) provides that “[t]he United States, [as well as] all agencies and instrumentalities thereof, ... shall not be immune from suit ... for any violation under this chapter.” 15 U.S.C. § 1122(a). And the Lanham Act’s definition of the “United States” “includes and embraces all territory which is under its jurisdiction and control.” But the clear statement rule requires any act of Congress that purports to waive or abrogate sovereign immunity to be “unmistakably clear in the language of the statute,” and this wasn’t, because the phrase “territory which is under [the United States’] jurisdiction and control” was open to multiple interpretations. “Whether the word ‘territory’ captures Puerto Rico is itself ambiguous, given Puerto Rico’s status as a self-governing commonwealth.”

The court found that, “[p]articularly in the Lanham Act, it also seems plausible that Congress used the words ‘all territory’ (singular) to ensure that the statute would cover the entire geographic scope of the United States, rather than refer to the territories (plural) of the United States as political or governmental units.” Such a geographical reading would be consistent with provisions of the Lanham Act governing the importation of goods “into the United States,” and defining the fame of a mark based on recognition by “the general consuming public of the United States.” Indeed, it wasn’t even “unmistakably clear” that the attempted revocation of sovereign immunity—which referred to the States—showed an intent to waive Puerto Rico’s sovereign immunity.

Of course, prospective injunctive relief was still possible, but not here. The district court found no ongoing violation of federal law because the sale of license plates and registration tags occurred only during calendar year 2022. What about the “unauthorized use of the Roberto Clemente trademark in connection with the Roberto Clemente Sports District”? This argument was waived. (!)

Qualified immunity: You might think you know how this will go, but these aren’t cops. Also waived at this stage! The individual defendants “specifically argued that appellants had not established a claim ‘under the Lanham Act’ and identified a particular element of one Lanham Act claim that they believed was missing” as their qualified immunity argument, and since they were wrong about that on the law, too bad. However, failing to properly invoke qualified immunity on a motion to dismiss does not necessarily preclude defendants from doing so at a later stage of litigation.

The court also was “skeptical” of plaintiffs’ argument that the Lanham Act abolished qualified immunity by waiving/trying to get rid of sovereign immunity. “[W]hen legislators have chosen to abolish qualified immunity, they have done so with much greater clarity.”

Chief Judge Barron partially dissented and would have affirmed the dismissal of claims for damages against the individual government defendants. The dissent would have read the district court to have found qualified immunity as to them on the ground that it was not clear that “use in commerce” covered the issuance of official license plates. The district court wrote, after discussing that element, that the individual defendants “were merely complying with their official duties to enforce a law as adopted by the legislature. As per the caselaw and other applicable law to date, any reasonable public official in their situation could have concluded that no trademark or proprietary rights were being violated by the imposition of the license fees that Plaintiffs have challenged in this case.” There was no clearly established precedent that governmental conduct akin to that involved here satisfies the “commercial use” element. “[W]hile out-of-circuit precedent establishes that private parties may violate the Lanham Act when they issue ‘marquee license plates,’ it does not speak to the distinct issues that this governmental context raises. Nor are those issues resolved by precedent that provides that, in general, state officials may violate the Lanham Act when they act in their official capacity.”