In a pivotal ruling on January 16, 2026, the First Circuit Court of Appeals partially reinstated claims under the Lanham Act brought by the heirs of baseball icon Roberto Clemente against senior officials in the Commonwealth of Puerto Rico. The court found that the heirs’ allegations regarding the unauthorized use of Clemente’s name and likeness on commemorative license plates and registration tags warranted further legal consideration.
While the court upheld the dismissal of claims against the Commonwealth and certain public entities due to sovereign immunity, it determined that individual officials could be held accountable in their personal capacities. This decision opens a pathway for the Clemente family to pursue claims of trademark infringement, false endorsement, and false advertising, among others.
The plaintiffs, which include Clemente’s sons and related entities, argued that the Commonwealth officials improperly utilized Clemente’s image for financial gain. Proceeds from the commemorative license plates were reportedly directed towards a public initiative intended to replace a previous project founded by Clemente himself. The plaintiffs alleged that this use constituted a violation of their rights under the Lanham Act and the constitutional amendments related to property takings.
In response to motions to dismiss the case, the district court initially ruled in favor of the defendants, asserting that the use of Clemente’s name and likeness did not qualify as being “in connection with” goods or services as defined by the Lanham Act. The First Circuit, however, disagreed, clarifying that the commemorative license plates and tags do indeed qualify as goods, regardless of their government origin.
The court referenced the United States Patent and Trademark Office’s Trademark ID Manual, which explicitly recognizes license plates as registrable goods. The ruling emphasized that the fundraising initiatives aimed at supporting the Roberto Clemente Sports District Fund should not be excluded from trademark consideration.
The First Circuit further concluded that the plaintiffs had sufficiently demonstrated a commercial injury within the Lanham Act’s purview. They presented a plausible case that the public might mistakenly believe the Clemente family endorsed or financially benefited from the license plate initiative. As such, the court ruled that dismissing the claims for trademark infringement under Section 32, false endorsement under Section 43(a), and dilution under Section 43(c) was inappropriate concerning the officials in their personal roles.
Sovereign immunity continues to protect the Commonwealth, the Convention Center District Authority, and officials acting in their official capacities. Nevertheless, the court indicated that the personal-capacity claims under the Lanham Act could proceed without being hindered by qualified immunity at this stage of the proceedings.
While the First Circuit affirmed the dismissal of the false advertising claim, it noted that the plaintiffs did not adequately demonstrate that the defendants’ statements constituted commercial advertising as required under Section 43(a)(1)(B). Additionally, the court upheld the dismissal of the claims related to the Takings Clause, stating that infringements of intangible intellectual property do not support a physical-taking theory and should not be interpreted through the framework applicable to physical occupation or appropriation.
Lastly, the court found that the plaintiffs had waived any remaining arguments related to the Lanham Act or takings against the Convention Center District Authority, as they failed to meaningfully develop these points in their opening brief.
This ruling not only highlights the complexities at the intersection of trademark law and government action but also underscores the enduring legacy of Roberto Clemente and the ongoing efforts of his family to protect his image and contributions. As the case moves forward, it may set a significant precedent for similar claims involving public entities and their officials.
