In a significant legal ruling, the US Court of Appeals for the First Circuit has partially revived claims made under the Lanham Act by the heirs of baseball legend Roberto Clemente. This ruling addresses the use of Clemente’s name and likeness by senior officials of the Commonwealth of Puerto Rico without authorization. The court’s decision, issued on January 16, 2026, allows certain claims against government officials in their personal capacities to proceed, while affirming the dismissal of claims against the Commonwealth and related public entities.
The case, titled Clemente Props., Inc. v. Pierluisi-Urrutia, centers on allegations made by Clemente’s sons and affiliated entities. They assert that government officials improperly utilized Clemente’s name and image on commemorative license plates and registration tags. The revenue generated from these items was intended for a public initiative replacing a project established by Clemente himself. The plaintiffs claim this amounts to trademark infringement, false endorsement, false advertising, and dilution under the Lanham Act, as well as a violation of the Fifth and Fourteenth Amendments.
Initially, the district court dismissed the claims, citing immunity grounds and a failure to state a claim. However, after appealing, the First Circuit reversed part of the decision. The court contested the district court’s conclusion that the use of Clemente’s name and image was not connected to goods or services, as defined by the Lanham Act. Specifically, the court noted that commemorative license plates and tags qualify as goods, emphasizing that their issuance by a government entity does not exempt them from the Act’s commercial scope.
The court referenced the United States Patent and Trademark Office’s Trademark ID Manual, which recognizes license plates as registrable goods. It found no compelling reason to exclude the fundraising activities linked to the Roberto Clemente Sports District Fund from trademark considerations. The First Circuit concluded that the plaintiffs adequately alleged commercial injury within the Lanham Act’s interests and effectively demonstrated a likelihood of confusion, including the mistaken belief that the Clemente family endorsed or benefitted from the initiative.
While the First Circuit allowed claims of trademark infringement, false endorsement, and dilution against officials acting in their personal capacities to move forward, it upheld sovereign immunity for the Commonwealth and officials acting in their official capacities. The court clarified that qualified immunity does not protect the personal-capacity Lanham Act claims at this stage, thus vacating the dismissal and remanding for further proceedings.
In its ruling, the court also affirmed the dismissal of the false advertising claim, stating that the plaintiffs did not sufficiently allege that the defendants’ statements constituted commercial advertising or promotion as required by the law. Furthermore, the court upheld the dismissal of the Takings Clause claim, determining that infringements of intangible intellectual property do not support claims of physical taking.
Additionally, the First Circuit noted that any remaining Lanham Act or takings arguments against the Convention Center District Authority were waived, as the plaintiffs did not adequately develop those points in their opening brief. This ruling illustrates the ongoing complexities at the intersection of trademark law and government actions, particularly concerning the legacy of iconic figures like Roberto Clemente.
