Fighting Back Against Trademark Theft: The Roberto Clemente Family v. Government of Puerto Rico
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
The Government of 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 registration tags and 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, the Government of Puerto Rico required motorists to buy the Roberto Clemente license plate. The Government of 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, the Government of 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 Rico.
Puerto Rico’s unauthorized use of Clemente’s trademark tarnished both the trademark and the family’s reputation. The Government of 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
The Beacon Center of Tennessee, a sister free market think tank of ILE in Tennessee, will argue two issues on appeal. Both issues will have significant ramifications for property owners in all of the United States, including those who reside in Tennessee and Puerto Rico.
First, they will 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, they will argue that the Government of 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 the 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-Rodríguez
Amicus Curiae
The Puerto Rico Institute for Economic Liberty (ILE) filed an amicus brief in support of the Clemente family. Two reasons compelled ILE to do so. First, we are concerned about the ramifications of giving the green light to this government action, which deprives the Clemente family of fundamental property rights protected by the Fifth Amendment’s Takings Clause. The image rights are private property and private property is inseparable from economic freedom. Second, Roberto Clemente is considered a national hero in Puerto Rico, born and raised in the neighborhood of San Anton in the city of Carolina.
Case Documents
Appellants’ Opening Brief from Beacon Center
Puerto Rico Institute for Economic Liberty amicus brief
This story was originally published by the Beacon Center of Tennessee.
