Opinion

Clemente Properties, Inc. v. Pierluisi

Court: District Court, D. Puerto Rico
Filed: Sep 22, 2023
Cited by: 0 cases
Authority: More cited than 29.4%

“[A]s a general rule, a person’s image or likeness cannot function as a trademark.”

How later courts described this case

“[A]s a general rule, a person’s image or likeness cannot function as a trademark.”
concluding it was an error for the district court to find “that consideration of the ‘clearly established’ prong of the qualified immunity defense was premature before discovery.”
“We further note that ‘[t]he Commonwealth of Puerto Rico is treated as a state for purposes of Eleventh Amendment immunity analysis.’”
holding an intangible property interest in trade secrets is a right protected by the Taking Clause of the Fifth Amendment

Written by the judges who cited it.

The opinion

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF PUERTO RICO

Clemente Properties, Inc., et al.,

Civil No. 22-1373 (GMM)

Plaintiffs,

Hon. Pedro R. Pierluisi Urrutia,

Governor of Puerto Rico, in his

Official and Individual Capacity

and as representative of the

Commonwealth of Puerto Rico; et

als.,

Defendants.

OPINION AND ORDER

Pending before the Court are three motions to dismiss: (1)

Amended and Restated Motion to Dismiss Complaint And Amended

Complaint Under FRCP 12(B)(6) (“Authority’s Motion to Dismiss”)

filed by the Puerto Rico Convention Center District Authority’s

(the “Authority”) (Docket No. 36); (2) Motion to Dismiss Amended

Complaint for Failure to State a Claim Under Federal Rule Of Civil

Procedure 12(B)(6) filed by the Commonwealth of Puerto Rico

(“Commonwealth”), Hon. Pedro R. Pierluisi-Urrutia (“Governor

Pierluisi”), in his official capacity as Governor of the

Commonwealth and in his personal capacity; Eileen M. Vélez-Vega,

in her official capacity as Secretary of the Department of

Transportation and Public Works (“Department of Transportation”)

and in her personal capacity (“Secretary of Transportation”);

Francisco Parés-Alicea in his official capacity as Secretary of

the Department of the Treasury and in his personal capacity

(“Secretary of Treasury”), and Ray J. Quiñones-Vázquez, in his

personal capacity as Secretary of the Department of Sports and

Recreation (“Secretary of Sports and Recreation”) (collectively,

“Defendants”)(Docket No. 38); and (3) Motion to Dismiss filed by

the Secretary of Sports and Recreation, in his official capacity

(Docket No. 42).

I. RELEVANT FACTUAL AND PROCEDURAL BACKGROUND

On August 5, 2022, Clemente Properties, Inc.; 21 In Right,

Inc.; Roberto Clemente Jr.; Luis Roberto Clemente; and Roberto

Enrique Clemente (“Plaintiffs”) filed a Complaint against the

Commonwealth, Governor Pierluisi, in his official and individual

capacity and as representative of the Commonwealth; the Secretary

of Transportation, in her official and individual capacity and as

representative of the conjugal partnership composed by her and

John Doe; the Secretary of Treasury, in his official and individual

capacity; the Secretary of Sports and Recreation, in his official

and individual capacity and as representative of the conjugal

partnership composed of him and Jane Doe; and the Authority.

(Docket No. 1) (the “Complaint”).

Therein, Plaintiffs seek: (1) declaratory judgment

determining that the use of the Roberto Clemente mark, name, and

likeness pursuant to Puerto Rico Joint Resolutions No. 16 and 17

of 2021 and Act 67-2022 is unlawful, violates due process,

constitutes trademark infringement, violates the right of

publicity, and constitutes a taking; (2) declaratory judgment

decreeing that Puerto Rico Joint Resolutions No. 16 and 17 of 2021

and Act 67-2022 are unconstitutional; (3) injunctive relief

proscribing Defendants’ use of the Roberto Clemente mark and name

pursuant to Puerto Rico Joint Resolutions No. 16 and 17 of 2021,

without just compensation; (4) declaratory judgment “decreeing

that just compensation for the use of the mark pursuant to Joint

Resolutions No. 16 and 17 of 2021 is no less than $3,150,000.00

for the temporary taking of the trademark”; (5) “payment of just

compensation to Plaintiffs for the temporary use of the Roberto

Clemente mark, name and likeness”; (6) injunctive relief

proscribing Defendants’ use of the Roberto Clemente mark pursuant

to Puerto Rico Act 67-2022 and enjoining the creation of the

Roberto Clemente Sports District; and (7) “judgment for three times

the profits or damages, whichever amount is greater, or for

damages, in a sum of not less than $45,000,000.00”. Id. at 41-42.

Plaintiffs’ claims are brought pursuant to 28 U.S.C.A. § 2201

and 2202; Rule 65 of the Federal Rules of Civil Procedure, 42

U.S.C.A. § 1983 (“Section 1983”); the Lanham Trade-Mark Act, 15

U.S.C. §§ 1051–1127 (“Lanham Act”); the Takings Clause of the

Constitution of the United States, U.S. Const. Amend. V., the Due

Process Clause, U.S. Const. U.S. Const. Amend. XIV, and

supplemental claims under Puerto Rico Act 139 of 2011 (“Act 139”),

P.R. Laws Ann. Tit. 32 §§ 3151 et seq., and the Puerto Rico

Trademarks Act, Act 169 of 2009 (“Act 169”), P.R. Laws Ann. Tit.

10 §§ 223 et seq. Id. at 2.

Plaintiffs claim that pursuant to Puerto Rico Joint

Resolution No. 16 of 2021, at the beginning of calendar year 2022,

the Commonwealth —led by Governor Pierluisi through the Department

of Transportation— began to impose the mandatory purchase of a

commemorative license plate for the fiftieth anniversary of

Roberto Clemente’s “Hit 3000.” The Commonwealth charged twenty-

one dollars ($21.00) for the commemorative plate. Plaintiffs

allege that the license plate had an image of Roberto Clemente and

included the name “Clemente” with the number “21,” the number “50,”

the word “anniversary,” and the phrase “3000 hits.” Also, that

pursuant to Joint Resolution No. 17 of 2021, there was a mandatory

charge of five dollars ($5.00) in addition to the regular costs

for duties, tariffs, and fines, for a commemorative vehicle

certificate tag. The vehicle certificate tag was yellow, had the

figure of Roberto Clemente with the name “Clemente,” the number

“21,” the number “50,” and phrase “3000 hits.” According to

Plaintiffs, the cost charged to the citizens of Puerto Rico was

transferred to the Roberto Clemente Sports District Fund,

administered by the Department of Treasury, for the exclusive use

of the Department of Sports and Recreation. Id. at 8-10.

In addition, Plaintiffs argue that Defendants acted

willfully, intentionally, and with full awareness about the mark’s

misappropriation, because it is allegedly common knowledge that

the Plaintiffs are the owners of the Roberto Clemente mark, his

right of publicity, his likeness, and the legacy it represents.

Plaintiffs claim that the Roberto Clemente mark has been in use

since 1955 and Clemente Properties, Inc. registered the mark with

the United States Patent and Trademark Office (“USPTO”) under

Registration No. 5,176,650, Serial number 86048262. Id. at 5.

Therefore, they argue that the unauthorized use by the Commonwealth

constitutes an infringement of a registered trademark and a

violation of the Takings and Due Process Clauses of the United

States Constitution.

On November 23, 2022, Plaintiffs filed an Amended Complaint1,

which maintained the same allegations, but included additional

assertions regarding the adoption of the Joint Resolution No. 16.

They posit that before its adoption, they had already authorized

Ciudad Deportiva Roberto Clemente to use the trademark, name, and

likeness of Roberto Clemente for vehicles’ license plates. (Docket

No. 27). Plaintiffs add that Ciudad Deportiva Roberto Clemente

1 On September 28, 2022, the Authority filed a motion to dismiss for failure to

state a claim. (Docket No. 14). On November 2, 2022, Governor Pierluisi and

Defendants filed a motion to dismiss for failure to state a claim. (Docket No.

19). The Secretary of Sports and Recreation also filed a Motion for Joinder to

the motion to dismiss at Docket No. 19. (Docket No. 22). On December 2, 2023,

these motions to dismiss were denied without prejudice as moot due to the filing

planned to raise funds by the issuing of commemorative license

plates to be available to the public in exchange for a voluntary

donation of $2.10. Id. at 12.

On December 26, 2023, the Authority filed its Motion to

Dismiss. (Docket No. 36). The Authority argues dismissal is

warranted under Rule 12 (b)(6) since: (1) it is not acting under

color of state law to illegally, culpably, negligently,

intentionally, knowingly, or willfully, use and pretend to

continue using the Roberto Clemente mark, name, and likeness in

contravention of the aforementioned legal provisions; (2) the

Authority’s only involvement is incidental and only regards its

participation in the legislative process before the adoption of

Act 67-2022; (3) there is no relief sought from the Authority as

there is no claim that it has caused any breach, violation, damage,

and/or unlawful use of Plaintiffs’ property, and the allegations

regarding the Authority relate to obligations which the Authority

will legally perform under state law. According to the Authority,

Act 67-2022 imposes obligations to be carried out once the property

is transferred to the Commonwealth, obligations which the

Authority cannot even perform to date; and (4) that the Authority,

as a government entity created under Puerto Rico Act 351-2000, has

a legal obligation to be bound by the laws duly enacted by the

Puerto Rico legislature, in which case, the Authority has no

influence on which laws are enacted, and thus, no bearing on the

passing of Act 67-2022. Id. at 6-11.

On January 9, 2023, the Defendants filed a Motion to Dismiss

Amended Complaint for Failure to State a Claim under Federal Rule

of Civil Procedure 12 (b)(6). (Docket No. 38). First, Defendants

argue that Plaintiffs’ claims against the Commonwealth and the

official capacity Defendants are barred by sovereign immunity as

provided by the Eleventh Amendment of the United States

Constitution. Specifically, they claim that this Court does not

have jurisdiction to entertain suits under the Lanham Act, because

suits against states and its officers, in their official capacity,

are barred by the Eleventh Amendment immunity, as determined by

the Supreme Court in College Savings Bank v. Florida Prepaid

Postsecondary Education Expense Board, 527 U.S. 666 (1999). In

addition, Defendants posit that the monetary claim pursuant to the

Fifth Amendment Takings Clause against the Commonwealth is also

barred by the Eleventh Amendment immunity.

Second, Defendants argue that, under the Lanham Act,

Plaintiffs lack standing to claim damages suffered by the

corporations Clemente Properties, Inc., and 21 In Right, Inc.

Third, Defendants assert that Plaintiffs lack standing to

claim damages suffered by Ciudad Deportiva Roberto Clemente, Inc.,

an independent corporate entity which is not a party to this case.

Defendants contend that Plaintiffs also lack standing to assert

the land transfer claims mandated by Act 67-2022 and that the Court

lacks jurisdiction over such matters since the requested relief

would entail the Court enjoining the land transfer mandated by

this statute, from Ciudad Deportiva Roberto Clemente, Inc., back

to the Commonwealth, through the Sports and Recreation Department.

Fourth, Defendants argue that Plaintiffs fail to state a claim

for violations of their right to Substantive Due Process under the

Fourteenth Amendment and that having asserted a Fifth Amendment

Takings Clause claim, the alleged infringement of their property

rights are to be ruled upon under the standards of that

constitutional clause, and not the due process clause.

Fifth, Defendants posit that Plaintiffs fail to state a claim

under the Lanham Act for individual liability against Defendants

in their personal capacity.

Sixth, Defendants contend that Plaintiffs fail to establish

a false advertising claim and that there is no “commercial

advertising or promotion” nor “intention to influence potential

customers” in this case which would activate liability under the

Lanham Act.

Seventh, Defendants allege that image rights and rights of

publicity are determined not by federal law but by state law, and

that under Puerto Rico Act 139, such right extends up to twenty-

five years after the person’s death. They posit that in Roberto

Clemente’s case, this period expired in 1998.

Eighth, Defendants argue that Plaintiffs’ request for

injunctive relief for the alleged trademark violations has become

moot since the sale of license plates and license labels mandated

by Joint Resolutions 16-2021 and 17-2021 expired by its own terms

on December 31, 2022.

Ninth, Defendants contend that Plaintiffs failed to state a

claim against personal capacity Defendants under Section 1983,

since their personal involvement, as described in the Amended

Complaint, does not support a liability finding against them under

that statute.

Tenth, that Defendants who were sued in their personal

capacity are entitled to qualified immunity, to the extent that

they were carrying out their legal duties by enforcing statutes

validly enacted by the Commonwealth’s Legislative Assembly,

against which no constitutional challenge has been raised by

Plaintiffs.

Eleventh, Defendants argue that after dismissing all of

Plaintiffs’ federal claims the Court should decline to exercise

supplemental jurisdiction over claims brought under the Puerto

Rico’s Constitution and laws.

On January 17, 2023, the Secretary of Sports and Recreation

filed a Motion to Dismiss. (Docket No. 42). He argues that Eleventh

Amendment immunity bars any claim for monetary relief against him

in his official capacity as Secretary of Sports and Recreation. In

addition, for the same reasons, he contends that claims under

Section 1983 brought against him in his official capacity must be

dismissed. Moreover, he states that as Secretary of Sports and

Recreation he is immune from suit under the Takings Clause and the

Lanham Act. Furthermore, he maintains that Plaintiffs have not

raised a claim upon which a relief may be granted since he has not

yet executed his rights, duties and function pursuant to Act 67-

2022.

On February 24, 2023, Plaintiffs filed a Response in

Opposition to Puerto Rico Convention Center District Authority’s

Motion to Dismiss Amended Complaint. (Docket No. 44). Plaintiffs

argue that the Authority’s Motion to Dismiss must be disregarded,

because there was a straightforward trademark infringement claim.

Specifically, they contend that the Roberto Clemente mark is

registered in International Class 41 which includes entertainment

services. Furthermore, they posit that that the image and likeness

of Roberto Clemente are an integral part of the registered

trademark and that Section 43 (a) of the Lanham Act, provides the

federal equivalent protection of the right for publicity and can

thus protect an individual’s image or likeness from unauthorized

use. Additionally, they argue that the Authority has actively

pursued and contributed to the creation of the Roberto Clemente

Sports District and had a leading role in its development. For

that reason, injunctive relief is warranted.

Also on February 24, 2023, the Plaintiffs filed a Response in

Opposition to Secretary of the Department of Sports and

Recreation’s Motion to Dismiss Amended Complaint. (Docket No. 45).

Therein, they argue that the Amended Complaint should not be

dismissed based on Eleventh Amendment immunity, since no legal or

judicial doctrine in place justifies applying the principles of

Eleventh Amendment immunity in Puerto Rico. Moreover, they

maintain that claims pursuant to the Lanham Act may not be

dismissed on Eleventh Amendment grounds, because the Supreme Court

of the United States has only determined that States’ sovereign

immunity cannot be validly abrogated in relation to a false-

advertising claim under the Lanham Act. Id. at 10-17. Regarding

the Takings Clause, they also allege that Eleventh Amendment

immunity does not apply. Lastly, Plaintiffs allege that they are

entitled to monetary and equitable remedies against the Department

of Sports and Recreation “for the creation and further development

of the Roberto Clemente Sports District using and taking the

Plaintiffs’ trademark, and for the unauthorized use and taking of

the Roberto Clemente trademark in license plates and vehicle

certificate labels, which generated earnings for [them].” Id. at

19. They claim that they are entitled to prospective injunctive

relief against state officials in their official capacity and that

these claims cannot be dismissed based on the Secretary of Sports

and Recreation’s allegation that they are not yet the owner of the

property or lands of the Roberto Clemente Sports District and that

they have not executed any duties as owners.

On March 17, 2023, Plaintiffs filed a Response in Opposition

to Government and Individual Defendants’ Motion to Dismiss Amended

Complaint. (Docket No. 53). Plaintiffs reiterate that “Puerto Rico

possesses no sovereign immunity or Eleventh Amendment immunity

from federal law or federal-court suits.” Id. at 9. Additionally,

they assert that there is no immunity from the application of the

Lanham Act. Furthermore, Plaintiffs contend that the reference to

Act 139 asserts an additional or alternative source of ownership

of the Roberto Clemente image, name, and likeness in violation of

that property right under the statute. They also argue that they

have standing as to these claims since they are the heirs of

Roberto Clemente, to whom the law, without any other legal contract

or act, invests with the property and transference rights to

Roberto Clemente’s image. Regarding the alleged due process

violation, Plaintiffs contend that their claim is valid, since

even if commemorating Roberto Clemente could be a legitimate

government interest -which they allege it is not- there is no need

for the misappropriation of the trademark to pursue that goal.

Plaintiffs also specifically respond to arguments regarding

liability pursuant to the Lanham Act. Regarding the individual

liability of Defendants, Plaintiffs allege that Defendants’

argument for lack of involvement or participation in the Lanham

Act violations is meritless. As to the claims of commercial

advertising or promotion and intention to influence potential

customers, Plaintiffs argue that the false advertising claim must

stand, since Defendants made misleading and false descriptions of

facts, in relation to the sales of Roberto Clemente name, image,

likeness, and trademark in the license plates and license labels,

and in relation to the Roberto Clemente Sports District project -

that would generate significant revenue for the government, and

have therefore caused damages. On the other hand, regarding the

mootness of the request for injunctive relief, Plaintiffs contend

that the temporary taking of the trademark persists until just

compensation is awarded and that equitable relief for trademark

violations for the sale of license plates and license labels is

still in order.

Regarding the Section 1983 claims, Plaintiffs respond that

Defendants are not entitled to qualified immunity regarding the

constitutional violations because they all originate from the

unauthorized use or appropriation of the registered trademark.

On May 22, 2023, the Commonwealth, Governor Pierluisi, the

Secretary of Transportation, the Secretary of Treasury, and the

Secretary of Sports and Recreation filed Reply to Opposition to

Motion to Dismiss Amended Complaint. (Docket No. 64). Regarding

Eleventh Amendment immunity, Defendants argue that the doctrine

still stands and is applicable to this case. Furthermore, they

cite Allen v. Cooper, 140 S. Ct. 994 (2020) to sustain that

Congress has not abrogated the State’s sovereign immunity under

the Eleventh Amendment regarding intellectual property claims. As

to the claims under the Lanham Act, Defendants respond that

“Plaintiffs do not sell license plates nor yearly license labels

and no amount of artful pleading can establish the pleading

requisite of consumers withholding trade from them.” Id. at 11.

Also, in addressing the arguments relating to the substantive due

process claims, Defendants assert that Plaintiffs’ claims fall

outside the very limited scope defined by applicable law and find

no support in current substantive due process standards. In

addition, Defendants posit there are no legal grounds for

injunctive relief for official capacity Defendants to stop acting

when the statutory authorization, provided by Act 67-2022, for

them to carry those actions has already expired. They argue that

this is strictly a legal question that arises from Act 67-2022 and

requires no evidence to adjudicate it. Lastly, Defendants allege

that Plaintiffs provided no basis to establish any congressional

intention to abolish qualified immunity as a possible defense in

Lanham Act claims.

II. LEGAL STANDARD

A. Motion to Dismiss

To survive a motion to dismiss, a complaint must contain a

“short and plain statement of the claim showing that the pleader

is entitled to relief.” Fed. R. Civ. P. 8(a). The complaint “must

contain sufficient factual matter, accepted as true, to ‘state a

claim to relief that is plausible on its face.’” Ashcroft v. Iqbal,

556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550

U.S. 544, 570 (2007)). This pleading standard does not require

“detailed factual allegations,” but does require “more than labels

and conclusions, and a formulaic recitation of the elements of a

cause of action will not do.” Twombly, 550 U.S. at 555. “A claim

has facial plausibility when the plaintiff pleads factual content

that allows the court to draw the reasonable inference that the

defendant is liable for the misconduct alleged.” Iqbal, 556 U.S.

at 678. “Where a complaint pleads facts that are ‘merely consistent

with’ a defendant's liability, it ‘stops short of the line between

possibility and plausibility of “entitlement to relief.” ’ ” Id.

(quoting Twombly, 550 U.S. at 557). See also Álvarez-Maurás v.

Banco Pop. of Puerto Rico, 919 F.3d 617, 622 (1st Cir. 2019).

1. Federal Rule of Civil Procedure 12(b)(1)

It is settled that the standard followed by the Court when

considering a dismissal request under Rule 12(b)(1), is that the

court “must accept as true all well-pleaded factual claims and

indulge all reasonable inferences in plaintiff’s favor.” See

Viqueira v. First Bank, 140 F.3d 12, 16 (1st Cir. 1998), as

restated in Rolon v. Rafael Rosario & Associates, Inc., et al.,

450 F.Supp.2d 153, 156 (D.P.R. 2006). Moreover, [m]otions brought

under Rule 12(b)(1) are subject to the same standard of review as

Rule 12(b)(6). See Negron-Gaztambide v. Hernandez-Torres, 35 F.3d

25, 27 (1st Cir. 1994); De Leon v. Vornado Montehiedra Acquisition

L.P., 166 F. Supp. 3d 171, 173 (D.P.R. 2016). As such,

“[d]etermining whether a complaint states a plausible claim for

relief will. . .be a context-specific task that requires the

reviewing court to draw on its judicial experience and common

sense.” Iqbal, 556 U.S. at 679.

A motion to dismiss based on state sovereign immunity is

appropriate under both Rule 12(b)(1) and Rule 12(b)(6). The defense

of sovereign immunity is a claim that a court lacks the subject-

matter jurisdiction to hear a case and thus can be brought under

Rule 12(b)(1). See Valentin v. Hosp. Bella Vista, 254 F.3d 358,

362-63 (1st Cir. 2001) (citing Murphy v. United States, 45 F.3d

520, 522 (1st Cir. 1995)). In Valentin v. Hospital Bella Vista,

the Court held that Fed. R. Civ. P. 12(b)(1) is a “large umbrella,

overspreading a variety of different types of challenges to subject

matter jurisdiction” including “considerations of ripeness,

mootness, sovereign immunity, and the existence of federal

question jurisdiction”. Id. at 363.

Where subject matter jurisdiction is challenged under

12(b)(1), the party asserting jurisdiction bears the burden of

demonstrating the existence of federal subject matter

jurisdiction. See Skwira v. United States, 344 F.3d 64, 71 (1st

Cir. 2003); Murphy v. United States, 45 F.3d 520, 522 (1st Cir.

1995); McCulloch v. Velez, 364 F.3d 1, 5 (1st Cir.2004).

2. Federal Rule of Civil Procedure 12(b)(6)

To survive a motion to dismiss for failure to state a claim

under Rule 12(b)(6), the factual allegations in a complaint must

“possess enough heft” to set forth “a plausible entitlement to

relief.” Twombly, 550 U.S. at 544. Stated differently, “[a]

plaintiff must allege sufficient facts to show that he has a

plausible entitlement to relief.” Sanchez v. Pereira-Castillo, 590

F.3d 31, 41 (1st Cir. 2009). In analyzing the sufficiency of the

complaint, the Court accepts the complaint’s allegations as true

and draws all reasonable inferences in the plaintiff’s favor. See

Langadinos v. American Airlines, Inc., 199 F.3d 68, 69 (1st Cir.

2000)).

Under Rule 12(b)(6), dismissal is proper when “it clearly

appears, according to the facts alleged, that the plaintiff cannot

recover on any viable theory.” Gonzalez-Morales v. Hernandez-

Arencibia, 221 F.3d 45, 48 (1st Cir. 2000) (citing Correa-Martinez

v. Arrillaga-Belendez, 903 F.2d 49, 52 (1st Cir. 1990)).

Furthermore, dismissal for failure to state a claim is

appropriate if the complaint fails to set forth “factual

allegations, either direct or inferential, respecting each

material element necessary to sustain recovery under some

actionable legal theory.” Centro Medico del Turabo, Inc. v.

Feliciano de Melecio, 406 F.3d 1, 6 (1st Cir. 2005) (quoting Berner

v. Delahanty, 129 F.3d 20, 25 (1st Cir. 1997)); Gagliardi v.

Sullivan, 513 F.3d 301, 305 (1st Cir. 2008).

III. APPLICABLE LAW AND DISCUSSION

Courts presented with motions to dismiss under both Rules

12(b)(1) and 12(b)(6) should ordinarily decide jurisdictional

questions before addressing the merits. See Deniz v. Municipality

of Guaynabo, 285 F.3d 142, 149 (1st Cir. 2002). Thus, the Court

begins its analysis with Defendants’ arguments regarding Eleventh

Amendment immunity. Plaintiffs argue that Puerto Rico is a

territory of the United States and, as such, the Eleventh Amendment

immunity does not apply. To this end, Plaintiffs essentially allege

that the Eleventh Amendment exists for States, not territories

like the Commonwealth. Plaintiffs base their arguments mainly on

Puerto Rico v. Sánchez Valle, 579 U.S. 59 (2016). Furthermore,

Plaintiffs argue that Congress validly abrogated immunity for of

all the governmental entities and individuals within the United

States, including territories, under the Lanham Act through the

Trademark Amendments Act of 1999.

The Commonwealth and official capacity Defendants, on the

other hand, posit that the case against them should be dismissed

pursuant to the Eleventh Amendment. According to them, and in line

with Supreme Court precedent established in College Savings Bank

and reiterated most recently in Allen v. Cooper, Congress did not

abrogate state sovereign immunity in the amendments to the Lanham

Act.

A. The Doctrine of Stare Decisis Controls this Case

Since the Plaintiffs contend that this Court should disregard

First Circuit precedent based on their interpretation of the United

States Supreme Court’s case law on the applicability of the state

sovereign immunity doctrine to the Commonwealth, we must first

discuss the doctrine of stare decisis.

This doctrine comes from the Latin maxim “stare decisis et

non quieta movere,” meaning “to stand by the thing decided and not

disturb the calm.” Ramos v. Louisiana, ––– U.S. ––––, 140 S. Ct.

1390, 1411, 206 L.Ed.2d 583 (2020). “The doctrine of stare decisis

renders the ruling of law in a case binding in future cases before

the same court or other courts owing obedience to the decision.”

Gately v. Massachusetts, 2 F.3d 1221, 1226 (1st Cir. 1993). It is

“a foundation stone of the rule of law.” Allen v. Cooper, 140 S.

Ct. at 1003(quoting Michigan v. Bay Mills Indian Cmty., 572 U.S.

782, 798, 134 S.Ct. 2024, 188 L.Ed.2d 1071 (2014)).

Commonly, the doctrine of stare decisis is divided into

horizontal and vertical precedent. See Bryan A. Garner et al., The

Law of Judicial Precedent 27 (2016). Pertinent here, vertical

precedents are decisions in “the path of appellate review,” meaning

Supreme Court decisions control all lower federal courts, and

circuit court decisions control the dispositions of the federal

district courts in their circuits. Id. at 28. The Supreme Court

has repeatedly stressed the importance of both circuit and district

courts faithfully following vertical precedent. See Eberhart v.

United States, 546 U.S. 12, 19-20 (2005). Hence, we are obliged to

follow circuit precedent unless undermined by intervening Supreme

Court precedent or some other compelling authority. See Reisman v.

Associated Facs. of Univ. of Maine, 939 F.3d 409, 414 (1st Cir.

2019) (citing United States v. Barbosa, 896 F.3d 60, 74 (1st Cir.

2018)).

Absent guidance of the Supreme Court regarding the

Commonwealth’s Eleventh Amendment immunity, this Court is bound by

First Circuit rulings until any doctrinal developments are

established by Supreme Court precedent.

B. Eleventh Amendment Immunity

1. Generally

The Eleventh Amendment of the United States Constitution

provides that “[t]he Judicial power of the United States shall not

be construed to extend to any suit in law or equity, commenced or

prosecuted against one of the United States by Citizens of another

State, or by Citizens or Subjects of any Foreign State.” U.S.

Const. amend. XI.

Grounded in the principles of federalism, the Eleventh

Amendment provides that each state is a sovereign entity and

therefore “not amenable to suit without its consent.” Seminole

Tribe of Fla. v. Florida, 517 U.S. 44, 54 (1996). Essentially, the

Eleventh Amendment decrees that states cannot be sued in federal

court. The amendment “acts as a gatekeeper to the enforcement of

federal law against state actors.” See LAURA E. LITTLE, EXAMPLES

& EXPLANATIONS: FEDERAL COURTS 371 (3rd ed. 2013). In fact, “[t]he

very object and purpose of the [Eleventh] Amendment were to prevent

the indignity of subjecting a State to the coercive process of

judicial tribunals at the instance of private parties.” Puerto

Rico Aqueduct and Sewer Authority v. Metcalf & Eddy, Inc., 506

U.S. 139, 146 (1993) (quoting In re Ayers, 123 U.S. 443, 505

(1887)). That is the essence of Eleventh Amendment immunity, also

known as sovereign immunity.

2. Eleventh Amendment Immunity and Puerto Rico

Regarding the Commonwealth, “[t]he First Circuit has

consistently held that Puerto Rico, though obviously not a state,

is entitled to Eleventh Amendment immunity.” See What Constitutes

the State for Eleventh Amendment Purposes, 9C Charles Alan Wright

& Arthur R. Miller, Federal Practice and Procedure § 3524.2 (3d

ed.) The First Circuit first embraced this holding in 1981, in an

opinion by then Judge Stephen Breyer. See Ezratty v. Puerto Rico,

648 F.2d 770(1st Cir. 1981). Since 1981 —for over four decades—

the First Circuit has reiterated the holding “at least twenty-

eight times —about once a year— and described it as ‘settled,’ a

‘verity,’ ‘consistently held,’ and ‘beyond dispute.’” Adam D.

Chandler, Puerto Rico’s Eleventh Amendment Status Anxiety, 120

Yale L.J. 2183, 2189 (2011). The Court has even referred to these

precedents as a “phalanx of cases.” Id. (quoting Jusino Mercado v.

Commonwealth of Puerto Rico, 214 F.3d 34, 39 (1st Cir. 2000)). See

for example, the following cases where the First Circuit has held

that Puerto Rico enjoys Eleventh Amendment protection: Borrás-

Borrero v. Corporación del Fondo del Seguro del Estado, 958 F.3d

26, 33 (1st Cir. 2020) (noting that “Puerto Rico is treated as a

state for Eleventh Amendment purposes” but avoiding consideration

of the constitutional immunity question because the state entity

clearly prevailed on the merits) (quoting Fresenius Med. Care

Cardiovascular Res., Inc. v. P.R. and Caribbean Cardiovascular

Ctr. Corp., 322 F.3d 56, 61 (1st Cir. 2003)); Grajales v. P.R.

Ports Auth., 831 F.3d 11, 15 (1st Cir. 2016) (acknowledging that

Puerto Rico “enjoys” sovereign immunity in the same way as the

states) (citing Jusino Mercado v. Puerto Rico, 214 F.3d 34, 39

(1st Cir. 2000)); Guillemard-Ginorio v. Contreras-Gomez, 585 F.3d

508, 530 n.23 (1st Cir. 2009) (“We further note that ‘[t]he

Commonwealth of Puerto Rico is treated as a state for purposes of

Eleventh Amendment immunity analysis.’”) (quoting Díaz–Fonseca v.

Puerto Rico, 451 F.3d 13, 33 (1st Cir.2006)); Maysonet-Robles v.

Cabrero, 323 F.3d 43, 48 n.3 (1st Cir. 2003) (“This circuit has

consistently held that Puerto Rico enjoys immunity from suit

equivalent to that afforded to the States under the Eleventh

Amendment.”); Arecibo Community Health Care, Inc. v. Cmmw. of

Puerto Rico, 270 F.3d 17, 21 n.3 (1st Cir. 2001)(“It is well

settled in this circuit that the Commonwealth of Puerto Rico ‘is

protected by the Eleventh Amendment to the same extent as any

state...’”); Ortiz-Feliciano v. Toledo-Dávila, 175 F.3d 37, 39

(1st Cir. 1999)(“This circuit has already decided that the

Commonwealth is protected by the Eleventh Amendment to the same

extent as any state...”); Metcalf & Eddy, Inc. v. Puerto Rico

Aqueduct and Sewer Auth., 991 F.2d 935, 939 n.3 (1st Cir. 1993)(“We

have consistently treated Puerto Rico as if it were a state for

Eleventh Amendment purposes.”).

In addition, and pertinent to this case, this District has

previously ruled in intellectual property cases that the Eleventh

Amendment applies to the Commonwealth. In Berio-Ramos v. Flores-

Garcia, 2016 WL 270385 (D.P.R. 2016), this Court addressed

arguments that the Senate of Puerto Rico is not immune from

Robles v. Cabrero, 323 F.3d at 53 and Porto Rico v. Castillo, 227

U.S. 270, 273 (1913)— the Court ruled that the Copyright Remedy

Clarification Act did not abrogate the Eleventh Amendment’s

sovereign immunity for Puerto Rico; that Puerto Rico is considered

a state for purposes of federal immunity; and that the application

of Eleventh Amendment immunity is not limited to states and applies

to territories like Puerto Rico. Specifically, the Court rebutted

the same arguments that Plaintiffs bring here by concluding:

The argument overlooks the fact that in 1913, when Puerto

Rico was subject to the Jones Act, the Supreme Court

held that as an unincorporated territory of the United

States its government is entitled to Eleventh Amendment

immunity. Porto Rico v. Castillo, 227 U.S. 270, 273

(1913). And that situation has not changed after 1952

under the Federal Relations Act. See, Maysonet-Robles,

323 F.3d at 53 (1st Cir. 2003) (“Even though Puerto Rico

is an unincorporated territory of the United States, its

government has always been considered a sovereign entity

entitled to immunity from suit without its consent”).

Berio-Ramos v. Flores-Garcia, supra. See also, Rodriguez v. Casa

Salsa Restaurant, 260 F. Supp. 2d 413 (D.P.R. 2003) (In an opinion

dismissing Lanham Act trade dress infringement claims under Fed.

R. Civ. P. 12(b)(6), the court noted that it had previously

dismissed the claims against co-defendant Commonwealth based on

Eleventh Amendment immunity).

Moreover, quite recently the United States Supreme Court in

Financial Oversight & Management. Board. for P.R. v. Centro de

Periodismo Investigativo, Inc., 598 U.S. 339 (2023), “assum[ed]

without deciding that Puerto Rico is immune from suit in federal

district court. . .” Although it did not decide if the Commonwealth

is entitled to sovereign immunity, the Court acknowledged that

“Circuit precedent ha[s] settled Puerto Rico’s own immunity. . .”

Id. at 345.

It is certainly clear that (1) the First Circuit has long

treated Puerto Rico like a state for Eleventh Amendment purposes

and (2) the Supreme Court has expressly reserved the question of

whether Eleventh Amendment immunity principles apply to the

Commonwealth. Hence, as discussed above, this Court is required to

follow the First Circuit, and rules that Eleventh Amendment

sovereign immunity applies to the Commonwealth.

3. Exceptions to Eleventh Amendment immunity

The United States Supreme Court has recognized “only two

circumstances in which an individual may sue a State: First,

Congress may authorize such a suit in the exercise of its power to

enforce the Fourteenth Amendment. . .Second, a State may waive its

sovereign immunity by consenting to suit.” College Savings Bank,

527 U.S. at 670.

a. Abrogation

The Supreme Court has held that to abrogate the states’

immunity under the Eleventh Amendment, Congress “must make its

intent to abrogate sovereign immunity ‘unmistakably clear in the

language of the statute.’” Fin. Oversight & Mgmt. Bd. for Puerto

Rico v. Centro de Periodismo Investigativo, Inc., 598 U.S. at 346

(quoting Kimel v. Florida Bd. of Regents 528 U.S. 62, 73 (2000)).

Supreme Court precedent has recently reiterated this point

stating, “[i]f a defendant enjoys sovereign immunity, abrogation

requires an ‘unequivocal declaration’ from Congress.” Id. at 347

(quoting Dellmuth v. Muth, 491 U.S. 223, 232 (1989)); see also

Seminole Tribe of Fla., 517 U.S. at 55.

i. Congress has not abrogated sovereign immunity

under the Lanham Act

Regarding intellectual property, Congress has enacted

statutes barring state entities from asserting sovereign immunity

in infringement matters. Yet, the Supreme Court has invalidated

these statutes. In Florida Prepaid Postsecondary Educ. Expense

Bd. v. College Savings Bank, 527 U.S. 627 (1999), the Court found

that the Patent and Plant Variety Protection Remedy Clarification

Act, which abrogated state immunity from patent infringement

suits, was unconstitutional. Likewise, in College Savings Bank,

527 U.S. at 670, a decision issued on the same day as Florida

Prepaid, the Court found that the Trademark Remedy Clarification

Act, which abrogated state sovereign immunity for claims under the

Lanham Act, was unconstitutional. More recently, in Allen v.

Cooper, the Court ruled that the Copyright Remedy Clarification

Act of 1990, which abrogated state immunity for liability for

Hence, “Congress has not abrogated immunity for intellectual

property claims, including trademark claims, brought under the

Lanham Act and subsequent amendments.” Kentucky Mist Moonshine,

Inc. v. University of Kentucky, 192 F.Supp.3d 772 (2016) (citing

Florida Prepaid Postsecondary Educ. Expense Bd., 527 U.S. at 631

n.1; College Savings Bank, 527 U.S. at 691). To date, all federal

courts that have addressed this issue have concluded the same. See

also Board of Regents of the Univ. of Wisconsin Sys. v. Phoenix

Int’l Software, Inc., 653 F.3d 448, 458 (7th Cir. 2011) (Observing

that “these [Supreme Court] decisions appear to foreclose any

argument that Congress has properly abrogated” state sovereign

immunity to liability in trademark actions); Jackson v. State of

Connecticut Dep’t of Pub. Health, No. 3:15-CV-750 (CSH), 2016 WL

3460304, at *12 (D. Conn. June 20, 2016) (“Just as the Eleventh

Amendment precludes suits against the State in § 1983 actions,

such immunity also exists with respect to the Lanham Act[.]”);

Utah Republican Party v. Herbert, 141 F. Supp. 3d 1195, 1200 (D.

Utah 2015) (“College Savings Bank made clear that “the Trademark

Remedy Clarification Act did not abrogate sovereign immunity for

actions brought under the Lanham Act.”).

Moreover, Plaintiffs misread the purpose of the Trademark

Amendments Act of August 5, 1999, PL 106–43 (S 1259), which they

argue was enacted by Congress after the Florida Prepaid cases to

reinstate their intention to abrogate state sovereign immunity. A

review of the Congressional record suggests otherwise: “our bill

will amend the Lanham Act to subject the federal government to

suit for trademark infringement and dilution.” 145 Cong. Rec.

S7452-04, 145 Cong. Rec. S7452-04, S7454, 1999 WL 412237. The

congressional record clearly reflects the legislature’s intention

was not to reinstate the dispositions regarding state sovereign

immunity, which had just been declared unconstitutional:

The Hatch-Leahy Trademark Amendments Act is significant

legislation to enhance protection for trademark owners

and consumers by making it possible to prevent trademark

dilution before it occurs, by clarifying the remedies

available under the Federal trademark dilution statute

when it does occur, by providing recourse against the

Federal Government for its infringement of others'

trademarks, and by creating greater certainty and

uniformity in the area of trade dress protection.

. . .

Third, the bill amends the Lanham Act to allow for

private citizens and corporate entities to sue the

Federal Government for trademark infringement and

dilution. Currently, the Federal Government may not be

sued for trademark infringement, even though the Federal

Government competes in some areas with private business

and may sue others for infringement. This bill would

level the playing field, and make the Federal Government

subject to suit for trademark infringement and dilution.

I note that the Lanham Act also subjects the States to

suit, but that provision has now been held

unconstitutional. Last week, the Supreme Court held in

College Savings Bank versus Florida Prepaid

Postsecondary Education Expense Board that federal

courts were without authority to entertain these suits

for false and misleading advertising, absent the State's

waiver of sovereign immunity. This case (as well as the

other two Supreme Court cases decided the same day),

raise a number of important copyright, federalism and

other issues, but do not effect the provision in the

bill that waives Federal government immunity from suit.

See 145 Cong. Rec. S8252-01, 145 Cong. Rec. S8252-01, S8253-54,

1999 WL 484889 (emphasis added).

In other words, the congressional intention when adopting the

Trademark Amendments Act was to establish sovereign immunity

abrogation as to the federal government, not for states or

territories.

In addition, recent congressional work confirms that —

contrary to Plaintiffs’ arguments— Congress did not validly

abrogate state sovereign immunity as to trademark claims under the

Lanham Act and its amendments. The United States Senate recently

requested a study from the United States Patent and Trademark

Office, in light of the ruling in Allen v. Cooper, which to their

understanding “created a situation in which copyright owners are

without remedy if a State infringes their copyright and claims

State sovereign immunity under the Eleventh Amendment of the U.S.

Constitution”, which “was already the case in patent law and some

aspects of federal trademark law following two Supreme Court

decisions in 1999.” See U.S. PATENT AND TRADEMARK OFFICE, REPORT TO

CONGRESS: INFRINGEMENT DISPUTES BETWEEN PATENT AND TRADEMARK RIGHTS HOLDERS AND

STATES AND STATE ENTITIES (Aug. 31, 2021) 20. As per letter from Senators

Patrick Leahy and Thom Tillis, dated April 28, 2020, “Allen v.

Cooper provided Congress a blueprint for how to validly abrogate

State sovereign immunity from certain patent and trademark

infringement claims.” To that extent, they requested guidance on

whether legislative action was necessary to address this matter.

Plaintiffs argue that their trademark claims are not barred

because Congress has abrogated the Commonwealth’s immunity under

the Eleventh Amendment. Yet, as discussed, the Supreme Court made

clear in College Savings that Congress did not abrogate sovereign

immunity for actions brought under the Lanham Act. This means that,

to date, the Commonwealth enjoys sovereign immunity with respect

to Lanham Act claims, unless it has waived its sovereign immunity.

b. Waiver

Sovereign immunity is “a personal privilege which [a State or

entity of the State] may waive at pleasure.” College Saving Bank,

527 U.S. at 675 (quoting Clark v. Barnard, 108 U.S. 436, 447

(1883)). However, the decision to waive such immunity “is

altogether voluntary on the part of the sovereignty.” Id. (quoting

Beers v. Arkansas, 20 How. 527, 529, 15 L.Ed. 991 (1858)). A waiver

may be found where (1) a State “voluntarily invokes jurisdiction”

by filing suit in federal court, or (2) a State “makes a ‘clear

declaration’ that it intends to submit itself to. . . [the court’s]

jurisdiction[.]” Id. (quoting Great Northern Life Ins. Co. v. Read,

322 U.S. 47, 54, 64 S.Ct. 873, 88 L.Ed. 1121 (1944)). When

reviewing a state’s words, courts should infer waiver only “by the

most express language or by such overwhelming implications from

the text as (will) leave no room for any other reasonable

construction.” Edelman v. Jordan, 415 U.S. 651, 673 (1974)

(quoting Murray v. Wilson Distilling Co., 213 U.S. 151, 171, 29

S.Ct. 458, 464, 53 L.Ed. 742 (1909)).

In other words, after College Savings, any waiver of sovereign

immunity by a state, or in this case by the Commonwealth, must be

express and voluntary, and cannot be implied or constructive. Under

this “stringent” standard, Plaintiffs must show express or

unequivocal waiver of immunity by the Commonwealth with respect to

Lanham Act claims. They fail to do so. There is no suggestion in

Plaintiffs’ Amended Complaint that the Commonwealth has expressly

consented to being sued in federal court, nor is there any

suggestion that it has, in some other way, waived its right to

sovereign immunity and thus exposed itself to a suit in the federal

jurisdiction. In fact, the Amended Complaint is completely devoid

of any allegation or explanation of how Plaintiffs contend that

they can bypass the Commonwealth’s sovereign immunity in order to

bring these claims for damages and injunctive relief against it.

c. Ex Parte Young: Defendants in their Official Capacity

There is one remaining exception to the sovereign immunity

doctrine. The Eleventh Amendment generally bars suits against

states and state officers in their official capacity. “However,

the exception to Eleventh Amendment immunity laid out in Ex parte

Young, 209 U.S. 123 (1908), allows federal courts to “‘grant [ ]

prospective injunctive relief to prevent a continuing violation of

federal law,’ in part because ‘a suit challenging the

constitutionality of a state official’s action in enforcing state

law is not one against the State.’” Doe v. Shibinette, 16 F.4th

894, 903 (1st Cir. 2021) (quoting Negrón-Almeda v. Santiago, 528

F.3d at 24); see also Green v. Mansour, 474 U.S. 64, 68, (1985).

While it is true that claims for prospective injunctive relief

may be advanced against state officials under the Ex parte Young

exception, claims for “retroactive monetary relief” are barred.

“It has remained abundantly clear. . .that the Eleventh Amendment

protects a state official, acting in his official capacity, from

any claim for retrospective monetary relief, just as if it were a

suit against the state itself.” Mills v. Maine, 118 F.3d 37, 54

(1st Cir. 1997). “The Ex parte Young doctrine does not apply in

cases where plaintiffs seek monetary relief for past violations of

federal law, regardless of whether the party the plaintiffs seek

to designate as a defendant is nominally a state officer sued in

his official capacity.” Vega Castro v. Puerto Rico, 43 F.Supp.2d

186, 191 (D.P.R. 1999).

“In determining whether the doctrine of Ex parte Young avoids

an Eleventh Amendment bar to suit, a court need only conduct a

‘straightforward inquiry into whether [the] complaint alleges an

ongoing violation of federal law and seeks relief properly

characterized as prospective.’” Verizon Md., Inc. v. Pub. Serv.

Comm’n, 535 U.S. 635, 645 (2002) (quoting Idaho v. Coeur d'Alene

Tribe of Idaho, 521 U.S. 261, 296, 117 S.Ct. 2028, 138 L.Ed.2d 438

(1997) (O’Connor, J., concurring in part and concurring in the

judgment)) (emphasis added). “[T]he pivotal question to be decided

when a defendant brings a motion to dismiss is whether the

requested relief would directly bring an end to an ongoing

violation of federal law.” Hootstein v. Collins, 670 F. Supp. 2d

110, 114 (D. Mass. 2009) (citing Papasan v. Allain, 478 U.S. 265,

278 (1986)). In addition, to pursue the claims for prospective

injunctive relief, the state officer named in the suit “must have

some connection with the enforcement of the act, or else [the

plaintiff] is merely making him a party as a representative of the

state, and thereby attempting to make the state a party. Ex parte

Young, 209 U.S. at 157.

We must also review if the requested equitable relief has

become moot. “The doctrine of mootness enforces the mandate ‘that

an actual controversy must be extant at all stages of the review,

not merely at the time the complaint is filed.’” ACLU of Mass. v.

U.S. Conf. of Cath. Bishops, 705 F.3d 44, 52 (1st Cir. 2013)

(quoting Mangual v. Rotger–Sabat, 317 F.3d 45, 60 (1st Cir. 2003)).

“A case might become moot if subsequent events made it absolutely

clear that the allegedly wrongful behavior could not reasonably be

expected to recur.” United States v. Concentrated Phosphate Exp.

Ass’n, 393 U.S. 199, 203 (1968). One “reason for mootness is that

a court cannot provide meaningful relief to the allegedly aggrieved

party,” especially when “the only relief requested is an

injunction,” and “there is no ongoing conduct left for the court

to enjoin.” U.S. Conf. of Cath. Bishops, 705 F.3d at 53.

Declaratory judgements deeming past conduct illegal are

similarly disfavored because “[t]he Supreme Court has admonished

that federal courts ‘are not in the business of pronouncing that

past actions [that] have no demonstrable continuing effect were

right or wrong.’” Id. (quoting Spencer v. Kemna, 523 U.S. 1, 18,

118 S. Ct. 978, 140 L. Ed. 2d 43 (1998)). For declaratory relief

to survive a mootness challenge, the facts alleged must “show that

there is a substantial controversy. . .of sufficient immediacy and

reality to warrant the issuance of a declaratory judgment.” Preiser

v. Newkirk, 422 U.S. 395, 402 (1975) (quoting Md. Cas. Co. v. Pac.

Co., 312 U.S. 270, 273 (1941)).

This court now employs the inquiry to determine if the

Plaintiffs’ Ex parte Young claims proceed. In the instant case,

Plaintiffs are seeking monetary relief for the damages allegedly

caused by the Commonwealth and official capacity Defendants.

Plaintiffs also seek declaratory and injunctive relief regarding

the Puerto Rico Joint Resolutions No. 16 and 17 of 2021 and Law

67-2022 which they allege provide for the use of the Roberto

Clemente trademark and thus violate their due process rights and

constitute trademark infringement. To determine whether Ex parte

Young applies, the Court must evaluate whether the complaint: (1)

alleges an ongoing violation of federal law; and (2) seeks relief

properly characterized as prospective monetary relief which is

barred by the Eleventh Amendment.

As to the first part of the Ex parte Young inquiry, Plaintiffs

only seek declaratory judgment that Defendants past conduct was

unlawful. On this matter, there is no real question of conflicting

legal interests for the Court to consider. Accordingly,

Plaintiffs’ request for declaratory judgment must be denied.

Plaintiffs also seek injunctive relief barring Defendants

from the “use [of] the Roberto Clemente mark, name and likeness,

pursuant to Puerto Rico Joint Resolutions No. 16 and 17 of 2021

without just compensation.” While Plaintiffs seek prospective

relief, they have provided the Court with no basis from which it

can infer any possibility of an ongoing violation of federal law.

Moreover, the Plaintiffs’ request for injunctive relief on the

trademark violations has turned moot since the sale of license

plates and license labels mandated by Joint Resolutions 16-2021

and 17-2021 expired by its own terms on December 31, 2022. The

Plaintiffs have not made any allegations that the Commonwealth or

individual Defendants continued the sales and alleged trademark

infringement beyond the date of expiration, and that such specific

conduct is capable of repetition. Therefore, the Court cannot

provide meaningful relief, as there is no ongoing conduct left for

the Court to enjoin. See U.S. Conf. of Cath. Bishops, 705 F.3d at

53. Accordingly, the Plaintiffs request for injunctive relief must

also be denied.

Furthermore, as explained in more detail in the sections that

follow, even if Plaintiffs were not barred from pursuing claims

against the Commonwealth in federal court —which they are— and

even if the claims where to survive prospective, injunctive relief

for alleged ongoing violations of federal law, specifically

trademark infringement, those claims fail because Plaintiffs have

not stated a viable trademark infringement claim pursuant to the

Lanham Act.

C. Failure to State a Claim for Trademark Infringement pursuant

to the Lanham Act

Plaintiffs allege that Defendants infringed on their

trademark under various provisions of the Lanham Act, 15 U.S.C. §§

1114 (“Section 32”), 1125(a) (“Section 43(a)”) and 1125(c)

(“Section 43(c)”). Specifically, Plaintiffs posit that “[t]hrough

the enactment and implementation of Joint Resolution No. 16,

Defendants incurred in an unauthorized use of the trademark, name

and likeness of Roberto Clemente in an identical product that the

one that was going to be sponsored by the trademark owners.”

(Docket No. 27 at 12-13). They further allege that “[t]he Roberto

Clemente trademark, his right to publicity and likeness, the legacy

it represents and the trademarks, names and likeness of his sons

as individual businessmen and representatives of the mark are

severally damaged by the actions of the Defendants” and that “[t]he

actions of the Defendants have caused Plaintiffs losses of business

opportunities and revenues”. Id. at 23. Also, that the “actions of

the Defendants constitute a gross misappropriation, discredit

dilution by blurring and by tarnishment and use in multiple ways

of the mark of Roberto Clemente, his right to publicity and

likeness in an illegal, negligent, culpable, willful and

unauthorized manner. They also tarnished the Plaintiffs’

trademarks, persons, names and their own likeness.” Id. at 23-24.

As to the false advertising claim, Plaintiffs allege that the

use of the Roberto Clemente mark in license plates and labels

“constitutes false advertising because it implies that the funds

would go to the Plaintiffs, owners of the Roberto Clemente mark.

It is also a use of the mark.” Id. at 11. They further posit that

Defendants are “using the Roberto Clemente trademark as a

subterfuge to collect money from the People.” Id. In addition,

they state that the use of the mark has encouraged contempt which

has led to “innumerable attacks and disdains in the televised,

written and on-line press, in social networks, in events, and

during every day activities.” Id.

1. Each Lanham Act Claim Requires Proof of Use in Commerce

and Commercial Use

“Trademark law seeks to prevent one seller from using the

same ‘mark’ as —or one similar to— that used by another in such a

way that. . .confuses the public about who really produced the

goods (or service).” DeCosta v. Viacom Int’l, Inc., 981 F.2d 602,

605 (1st Cir. 1992). Liability under each Lanham Act claim

expressly requires that a plaintiff establishes “use in commerce.”

Section 32 prohibits the unauthorized reproduction or use in

commerce of registered trademarks, while Section 43(a) proscribes

the use in commerce of words or symbols that misidentify the source

or affiliation of a product or service. As to the dilution claim,

the Lanham Act expressly excludes dilution liability based on any

noncommercial use of a mark. See 15 U.S.C. § 1125(c)(3(C).

Furthermore —separate and independent of the “use in commerce”

element— each Lanham Act claim also requires, expressly or

implicitly, that the allegedly infringing use be a “commercial

use” of the plaintiff’s mark.

More specifically, Section 32 prohibits, in relevant part,

the unauthorized

use in commerce [of] any reproduction, counterfeit,

copy, or colorable imitation of a registered mark in

connection with the sale, offering for sale,

distribution, or advertising of any goods or services on

or in connection with which such use is likely to cause

confusion, or to cause mistake, or to deceive...

15 U.S.C. § 1114.

Likewise, Section 43(a) makes liable

[a]ny person who, on or in connection with any goods or

services, or any container for goods, uses in commerce

any word, term, name, symbol, or device, or any

combination thereof, or any false designation of origin,

false or misleading description of fact, or false or

misleading representation of fact, which -- is likely to

cause confusion, or to cause mistake, or to deceive as

to the affiliation, connection, or association of such

person with another person, or as to the origin,

sponsorship, or approval of his or her goods, services,

or commercial activities by another person....

15 U.S.C. § 1125(a)(1)(A).

In addition, the Lanham Act prohibits “commercial advertising

or promotion” that “misrepresents the nature, characteristics,

[or] qualities” of a product. 15 U.S.C. § 1125(a)(1)(B). Also,

Section 43(c) provides, in pertinent part: “(3) Exclusions. The

following shall not be actionable as dilution by blurring or

dilution by tarnishment under this subsection:. . .(C) Any

noncommercial use of a mark.” 15 U.S.C. § 1125(c)(3)(C).

Federal trademark rights are created by actual “use” of the

mark in commerce. Kusek v. Family Circle, Inc., 894 F.Supp. 522,

531 (D. Mass. 1995) (citing 15 U.S.C. § 1051). Concurrently,

infringement of a federal trademark right is defined as

the unauthorized ‘use in commerce’ of any reproduction,

counterfeit, copy or colorable imitation of a registered

mark on goods or services ... and/or ‘use in commerce’

of any word, term, or false designation of origin, false

or misleading description of fact or false or misleading

representation of fact, which is likely to cause

confusion.

Id. (citing 15 U.S.C. §§ 1114(1)(a) and (b), 1125(a)). Hence, it

is not just any use of a trademark that will subject a defendant

to liability. Instead, these sections of the statute, which rely

on the Commerce Clause as their constitutional basis, prohibit

infringement only if a trademark is “use[d] in commerce” “in

connection with” “goods or services.” 15 U.S.C. §§ 1114(1)(a),

1125(a).

“The term ‘use in commerce’ means the bona fide use of a mark

in the ordinary course of trade.” Id. § 1127. This can occur when

the trademark is used on goods for sale, or “in the sale or

advertising of services.” Id. Furthermore, Sections 32 and 43(a)

“do not even reach an unauthorized use unless it is ‘in connection

with any goods or services.’” Int’l Ass’n of Machinists & Aerospace

Workers, AFL-CIO v. Winship Green Nursing Ctr., 914 F. Supp. 651,

654 (D. Me. 1996), aff'd, 103 F.3d 196 (1st Cir. 1996) (discussing

15 U.S.C. §§ 1114(1)(a), (b), and 1125(a)).

Thus, a trademark infringement injury under the Lanham Act is

limited to redressing acts that create consumer confusion:

[A] trademark is not property in the ordinary sense but

only a word or symbol indicating the origin of a

commercial product. The owner of the mark acquires the

right to prevent the goods to which the mark is applied

from being confused with those of others and to prevent

his own trade from being diverted to competitors through

their use of misleading marks. There are no rights in a

trademark beyond these.

Natl. Licensing Assn. v. Inland Joseph Fruit Co., 361 F. Supp.2d

1244, 1255 (E.D. Wash. 2004) (citing Dresser Industries, Inc. v.

Heraeus Engelhard Vacuum, Inc., 395 F.2d 457, 464 (3rd Cir. 1968)

(emphasis added).

“[T]he Lanham Act was enacted to protect trademarks and

service marks from use ‘in commerce’ by competitors in order to

avoid confusion among consumers.” Utah Republican Party v.

Herbert, 141 F.Supp.3d 1195, 1204 (D. Utah 2015). “To invoke the

protections of the Lanham Act, a plaintiff must show that the

alleged infringer used the plaintiff’s mark ‘in connection with

any goods or services.’” Id. at 1205. “The Lanham Act is intended

to protect the ability of consumers to distinguish among competing

producers, not to prevent all unauthorized uses.” Id. “Unless there

is a competing good or service labeled or associated with the

plaintiff’s trademark, the concerns of the Lanham Act are not

invoked.” Id. at 1204–1205. “[A] trademark, unlike a copyright or

patent, is not a ‘right in gross’ that enables a holder to enjoin

all reproductions.” Boston Athletic Ass’n v. Sullivan, 867 F.2d

22, 35 (1st Cir.1989) (citing Univ. of Notre Dame Du Lac v. J.C.

Gourmet Food Imports Co., 703 F.2d 1372, 1374 (Fed. Cir. 1983)).

2. Trademark Infringement under Section 32

“[T]o succeed on a claim of trademark infringement, a

plaintiff must establish (1) that its mark is entitled to trademark

protection, and (2) that the allegedly infringing use is likely to

cause consumer confusion.” Boston Duck Tours, LP v. Super Duck

Tours, LLC, 531 F.3d 1, 12 (1st Cir. 2008); see also Star Financial

Services, Inc. v. AASTAR Mortg. Corp., 89 F.3d 5, 9 (1st Cir. 1996)

(quoting DeCosta v. Viacom Int’l, Inc., 981 F.2d 602, 605 (1st

Cir. 1992)). Nationwide Payment Sols., LLC v. Plunkett, Civil No.

2:09-600 (GZS), 2011 WL 446077, at *10 (D. Me. Feb. 3, 2011),

report and recommendation adopted, 2011 WL 1045137 (D. Me. Mar.

16, 2011); Venture Tape Corp. v. McGills Glass Warehouse, 540 F.3d

56, 61 n.6 (1st Cir. 2008) (holding that claims under both 15

U.S.C. §§ 1114 and 1125(a) require plaintiff to allege use in

commerce of a trademark or marks that misidentify the affiliation

or source of a service, and likelihood of consumer confusion).

The Court finds the first prong has been satisfied by the

federal trademark registration that entitles Plaintiffs to the

trademark rights. Yet, the Court does not need to review the second

prong which focuses on the possibility that the allegedly

infringing use is likely to cause consumer confusion. Plaintiffs

have failed to allege how the Defendants have used their mark in

commerce “in connection with” “goods or services.”

Mere, alleged, unauthorized use of a trademark is not enough

to establish standing for trademark infringement. Although

Plaintiffs allege Defendants engaged in unauthorized use of a

trademark of “an identical product that the one that was going to

be sponsored by the trademark owners,” they have not alleged that

they actually provide the same “goods or services.” Moreover, “just

as copyright law does not protect ideas but only their concrete

expression, neither does trade dress law protect an idea, a

concept, or a generalized type of appearance.” Bonazoli v. R.S.V.P.

Int’l, Inc., 353 F. Supp. 2d 218, 229 (D.R.I. 2005) (citing Jeffrey

Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 32 (2d

Cir. 1995)). Also, the eight-factor confusion test generally

applied in the First Circuit is not applied to assess confusion in

the abstract; it is focused on the likelihood that commercially

relevant persons or entities will be confused. Astra

Pharmaceutical Prods., Inc. v. Beckman Instruments, 718 F.2d 1201,

1204–09 (1st Cir. 1983); Pignons S.A. de Mecanique v. Polaroid

Corp., 657 F.2d 482, 487–92 (1st Cir. 1981). Moreover, cases

analyzing the Lanham Act speak of confusion in terms of

“customers,” “consumers,” and “products” or “goods.”

Here, the alleged “goods or services” in controversy are

license plates and vehicle certificate tags issued by the

Department of Transportation. Like many states, the Commonwealth

uses the vehicle license plate program not only to identify

vehicles but as a revenue source. “Automobile license plates are

governmental property intended primarily to serve a governmental

purpose, and inevitably they will be associated with the state

that issues them.” Perry v. McDonald, 280 F.3d 159, 169 (2d Cir.

2001). Consequently, not only are these not the classes of products

or services that trademark law protects, but issuing motor vehicle

license plates and tags cannot be considered commercial use, as it

is a clear government activity. See Walker v. Texas Div., Sons of

Confederate Veterans, Inc., 576 U.S. 200 (2015).

Moreover, as described in the Amended Complaint, the license

plate and tags in controversy depict the figure of Roberto Clemente

in the context of the fiftieth anniversary of his 3,000th hit. This

was an event of historical significance for both, Puerto Rico and

Major League Baseball, and thus the significance of its

memorialization cannot be understated. Courts have recognized the

public value of information about the game of baseball and its

players, referring to baseball as “the national pastime.” See

Cardtoons, L.C. v. Major League Baseball Players Ass’n, 95 F.3d

959, 972 (10th Cir.1996). To that extent it must be noted that:

Major league baseball is followed by millions of people

across this country on a daily basis. . .The public has

an enduring fascination in the records set by former

players and in memorable moments from previous games. .

.The records and statistics remain of interest to the

public because they provide context that allows fans to

better appreciate (or deprecate) today’s performances.

C.B.C. Distribution & Mktg., Inc. v. Major League Baseball Advanced

Media, L.P., 505 F.3d 818, 823 (8th Cir. 2007) (quoting Gionfriddo

v. Major League Baseball, 94 Cal.App.4th 400, 411, 114 Cal.Rptr.2d

307 (2001)).

In the end, the issue is whether the Commonwealth, through

Joint Resolutions No. 16 and 17 of 2021 and Act 67-2022, provides

a “good or service” in commerce that infringes on the Plaintiffs

trademark. The Plaintiffs have not made a plausible allegation

that the Commonwealth or Defendants did so, and their claim is

thus unsuccessful because Plaintiffs failed to state an essential

element of their trademark infringement cause of action.

Accordingly, Plaintiffs lack standing and have failed to state a

redressable claim under Section 32.

3. False Advertising Under the Lanham Act

Plaintiffs allege that Defendants are liable for false

advertising in violation of Section 43 of the Lanham Act.

Section 43(a) creates two distinct bases of liability: false

association and false advertising. See Lexmark Int’l, Inc. v.

Static Control Components, Inc., 572 U.S. 118, 122 (2014). The

Lanham Act prohibits “commercial advertising or promotion” that

“misrepresents the nature, characteristics, [or] qualities” of a

product. 15 U.S.C. § 1125(a)(1)(B).

False advertising claims focus on whether a defendant has

made some false statement in advertising about the product that

fundamentally misrepresents its qualities. A false association

claim under subsection A, on the other hand, serves as the

functional equivalent of a traditional trademark infringement

claim for unregistered marks and trade dress. See 1-800 Contacts,

Inc. v. Lens.Com, Inc., 722 F.3d 1229, 1238 (10th Cir. 2013). That

is, the focus of the claim is on whether the mark causes confusion

by leading consumers to think that two products from different

sources are from the same source. “Claims brought under this

section are traditionally referred to as ‘false sponsorship’ or

‘false endorsement’ claims and are traditionally limited to

celebrity plaintiffs.” Ji v. Bose Corp., 538 F. Supp. 2d 349, 351

(D. Mass. 2008) (citing Parks v. LaFace Records, 329 F.3d 437 (6th

Cir. 2003)).

To state a claim for false advertising, a plaintiff must prove

that “(1) the defendant made a false or misleading description of

fact or representation of fact in a commercial advertisement about

his own or another’s product; (2) the misrepresentation is

material, in that it is likely to influence the purchasing

decision; (3) the misrepresentation actually deceives or has the

tendency to deceive a substantial segment of its audience; (4) the

defendant placed the false or misleading statement in interstate

commerce; and (5) the plaintiff has been or is likely to be injured

as a result of the misrepresentation, either by direct diversion

of sales or by a lessening of goodwill associated with its

products.” Cashmere & Camel Hair Mfrs. Inst. v. Saks Fifth Ave.,

284 F.3d 302, 310–11 (1st Cir. 2002). Moreover, to qualify as a

“commercial advertisement,” for purposes of a Lanham Act false

advertising claim, a representation must (1) constitute commercial

speech; (2) made with the intent of influencing potential customers

to purchase the speaker’s goods or services; (3) made by a speaker

who is a competitor of the plaintiff in some line of trade or

commerce; and (4) disseminated to the consuming public in such a

way as to constitute “advertising” or “promotion.” See Genzyme

Corp. v. Shire Human Genetic Therapies, Inc., 906 F.Supp.2d 9 (D.

Mass. 2012).

Based on the foregoing, Plaintiffs’ claims under Section

43(a) equally fail as a matter of law.

First, Plaintiffs lack standing to sue the Commonwealth and

Defendants under this section of the Lanham Act. In Lexmark, the

Supreme Court provided the framework for determining whether a

plaintiff has standing to raise a claim under Section 43(a). The

Supreme Court held that that a plaintiff invoking Section 43(a)

must show that his claim falls within the “zone of interests”

protected by that statute and that his injury was proximately

caused by the alleged violation. In this case, the Amended

Complaint fails to plead, much less meet, the proximate cause

requirement established in Lexmark.

The Court in Lexmark held “that a plaintiff suing under §

1125(a) ordinarily must show economic or reputational injury flows

directly from the deception wrought by the defendant’s

advertising; and that that occurs when deception of consumers

causes them to withhold trade from the plaintiff.” Lexmark Int’l,

Inc., 572 U.S. at 133. Here, however, not only is there is no

allegation, or even a suggestion, by Plaintiffs in their Amended

Complaint, that the Commonwealth or Defendants’ use of the Roberto

Clemente trademark caused “consumers” to withhold trade from them,

but as with their Section 32 claim, they again fail to allege “use

in commerce” and “in connection with goods or services.”

Moreover, as a false advertising claim, Plaintiffs’ cause is

plainly insufficient. They fail to plead the elements of

“commercial advertisement” and “commercial speech” as required to

state claim for false advertising under Lanham Act. Not only are

the license plates and tags not considered “goods or services”

under the statute, but they also cannot be considered

advertisements, and Plaintiffs have not even alleged as much.

Furthermore —and pertinent to this case— we must point out what

other courts have held in similar false advertising claims. In

Pirone v. MacMillan, Inc., 894 F.2d 579 (2nd Cir. 1990), the Second

Circuit rejected a trademark claim asserted by the daughters of

baseball legend Babe Ruth. There, plaintiffs objected to the use

of Ruth’s likeness in three photographs which appeared in a

calendar published by the defendant. The court rejected their

claim, holding that “a photograph of a human being, unlike a

portrait of a fanciful cartoon character, is not inherently

‘distinctive’ in the trademark sense of tending to indicate

origin.” Id. at 583. The court noted that Ruth “was one of the

most photographed men of his generation, a larger than life hero

to millions and an historical figure in whom interest still runs

high.” Id.; ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 922 (6th

Cir. 2003) (“[A]s a general rule, a person’s image or likeness

cannot function as a trademark.”) The Second Circuit Court

concluded that a consumer could not reasonably believe that Ruth