Fighting Back Against Trademark Theft: The Roberto Clemente Family v. Puerto Rico

March 5, 2024 6:49AM

Meet the Clementes

Roberto Clemente needs no introduction. Clemente played 18 seasons of baseball for the Pittsburgh Pirates, and tragically died in a plane crash in 1972 while he was delivering aid to victims of an earthquake in Nicaragua. He was then posthumously inducted to the Hall of Fame—becoming the first Latin-American Hall of Famer in baseball history. The Roberto Clemente mark has been trademarked with the United States Patent and Trademark Office since 1955. After Clemente died, the trademark passed on to his family under the company Clemente Properties, Inc. Ever since, Clemente’s children have sought to carry on their dad’s legacy as not just a baseball player, but also a humanitarian, by engaging in philanthropy in part funded by the revenue generated from the trademark.

Roberto Clemente, Jr. is a former broadcaster, baseball player, and the eldest son of Roberto Clemente. Clemente Jr. currently serves as co-chairman of the board of directors at Roberto Clemente Foundation—a Puerto-Rico based 501(c)(3) nonprofit that seeks to honor Roberto Clemente by replicating his legacy of faith, love, and service, and helping those less fortunate.

Luis Roberto Clemente is the second son of Roberto Clemente. Luis established the Clemente Legacy Program, which encourages students to become goodwill ambassadors in their community and aims to establish a scholarship fund for students. Luis is the president of the Roberto Clemente Foundation and 21 In Right, Inc., the family’s licensing company. The company is wholly owned by the Clemente brothers. 

Roberto Enrique Clemente is the youngest son of Roberto Clemente. Enrique has worked as a security guard and is a board member at the Roberto Clemente Foundation. 

Clemente Properties, Inc. owns the Roberto Clemente trademark. The corporation is wholly owned by the Clemente brothers. 

The Problem

Puerto Rico has appropriated Roberto Clemente’s trademark against his family’s wishes, and at the expense of his and his family’s reputation. 

In 2022, Governor Pierluisi-Urrutia ordered the Puerto Rico Department of Transportation to issue commemorative license plates celebrating the 50th anniversary of Roberto Clemente’s 3,000th hit. The Clementes notified Puerto Rico that its use of the Roberto Clemente trademark was illegal and pleaded with government officials not to go forward with their plan. Nonetheless, Puerto Rico required motorists to buy the Roberto Clemente license plate. Puerto Rico made around 15 million dollars from its unauthorized sale of the Roberto Clemente trademark and refused to provide the Clementes with a single penny. Instead, Puerto Rico used the money to commit an even worse violation: the money will help establish a Roberto Clemente Sports District that was never authorized by the Clementes and replaces the sports district that Roberto Clemente created to fulfill his dream of providing a sports facility for children in Puerto.   

Puerto Rico’s unauthorized use of Clemente’s trademark tarnished both the trademark and the family’s reputation. Puerto Rico is still recovering from a severe financial crisis. Puerto Ricans therefore resented the extra fees they were charged for the Roberto Clemente plate and (incorrectly) blamed the Clemente family.

The Clemente family filed a federal lawsuit, which alleged that the unauthorized use of Roberto Clemente’s trademark constituted an infringement of a registered trademark, and violated the Takings and Due Process Clauses of the United States Constitution and various Puerto Rico laws. The district court dismissed, partly relying on a doctrine that allows government to take property without paying a penny. The Clemente family has appealed the district court’s dismissal to the United States Court of Appeals for the First Circuit. 

Legal Issues 

We will argue two issues on appeal. Both issues will have significant ramifications for property owners nationwide, including those who reside in Tennessee.  

First, we argue that the government has to pay when it takes property from individuals. Under a legal doctrine called sovereign immunity, state governments can refuse to pay property owners even when it violates those property owners’ constitutional rights by taking their property. We argue that this is not only wrong, but inconsistent with the Constitution’s promise that the government must provide “just compensation” when it violates property rights. 

Second, we will argue that Puerto Rico violated the Takings Clause of the Fifth Amendment. The district court reached the opposite conclusion because the Clementes did not lose the entire value of their trademark. That dangerous logic, if adopted nationwide, would mean that government can infringe on property rights as long as the property retains some value. We argue the relevant inquiry isn’t whether the property still has any value but whether the government destroyed the property owners’ fundamental right to exclude. Just as a law requiring you to host unwanted guests in your house would violate the Constitution, so too does a law that requires the Clementes to allow others to use their trademark. 

The Legal Team 

Wen Fa is the Director of Legal Affairs at the Beacon Center.

Ben Stormes is an attorney at the Beacon Center.

Co-counsel: Tanaira Padilla-Rodriguez

Case Documents

Appellants’ Opening Brief

Puerto Rico Institute for Economic Liberty amicus brief