The family of baseball icon Roberto Clemente is urging the Supreme Court to hear a case concerning Puerto Rico's use of the late athlete's name and likeness, arguing that the Fifth Amendment's Takings Clause should protect intangible property.
In 2021, Puerto Rico enacted laws that imposed additional fees for license plates and registration tags bearing Clemente's name, image, jersey number 21, and reference to his 3,000 career hits. The revenue generated from these fees, totaling approximately $15 million, was directed into a government fund. Clemente's sons, who manage their father's trademark and humanitarian legacy, object to the program and its proceeds.
They filed a lawsuit, with assistance from the Beacon Center of Tennessee, citing the Lanham Act, which governs trademarks, and the Constitution's Takings Clause. The U.S. Court of Appeals for the First Circuit allowed aspects of the trademark claim to proceed but dismissed the constitutional claim. The court reasoned that the Supreme Court's established rule requiring compensation for government seizure of property applies only to tangible assets, treating trademarks as intangible and subject to a less protective legal standard.
The Clemente family's legal team contends that this distinction is misguided, asserting that the Constitution has historically protected incorporeal rights, not just physical property. They point to early American legal thought, including commentary by William Blackstone and James Madison, which encompassed franchises, easements, and contract rights as forms of property. Early Supreme Court rulings, such as one in 1848 concerning a bridge franchise, rejected attempts to differentiate between corporeal and incorporeal property when compensation was due.
Subsequent legal precedents have protected intangible assets like patents, contracts, liens, interest income, and trade secrets under the Takings Clause. A trademark, the argument goes, fits within this tradition as its value relies on exclusivity and the goodwill associated with a name or brand. When a trademark is used without authorization, the owner loses control over the associations that constitute its value.
Puerto Rico's actions, which included placing Clemente's mark on government products and collecting fees, are seen by the family as an unauthorized commercial use. They cite Supreme Court decisions such as Horne v. Department of Agriculture (2015), which affirmed compensation for the appropriation of personal property, and Cedar Point Nursery v. Hassid (2021), which emphasized the right to exclude. The Ruckelshaus v. Monsanto (1984) case, protecting trade secrets as intangible property, is also referenced.
The plaintiffs argue that a legal framework that protects tangible goods like raisins more robustly than trademarks fails to recognize the significant value of modern intangible assets such as brands, data, and goodwill, which often surpass the worth of physical assets. This is particularly concerning for Puerto Rico, where ensuring the protection of intangible assets against government seizure without fair compensation is deemed crucial for entrepreneurs and investors.
Adding to the legal challenge, the First Circuit's ruling reportedly found that Puerto Rico has state-like sovereign immunity that the Lanham Act does not override. The Manhattan Institute, along with Puerto Rico’s Instituto de Libertad Económica, filed an amicus brief supporting the Clemente family. They argue that combining immunity with a lower level of constitutional protection for intangible property could leave owners without meaningful recourse when the government monetizes their assets.
Roberto Clemente's legacy is honored in Puerto Rican culture and history, but his registered commercial mark, his family asserts, belongs to them. The family maintains that Puerto Rico could have pursued licensing agreements or voluntary tributes rather than legislating permission to use the mark and retain revenue. The Supreme Court's decision to take up the case, Clemente Properties v. Pierluisi-Urrutia, could clarify constitutional protections for intangible property when seized by the government.