Clemente Properties and Roberto Clemente’s three sons have joined a suit against the Puerto Rican government and numerous Puerto Rican officials.[1] The claims arise out of Puerto Rico’s use of a Roberto Clemente mark in the sale of governmental-issued license plates. The license plates were made available to the public for an extra fee upon vehicle registration.[2]
The complaint asserts standard claims for trademark infringement, including claims under the Lanham Act. It also raises a number of important legal questions and analyses, including issues regarding Puerto Rico’s sovereign immunity.[3]
The Issue of Sovereign Immunity
Under the 11th Amendment of the United States Constitution, state governments enjoy “sovereign immunity.” This gives states immunity from being sued by their own citizens. However, the following exceptions to the 11th Amendment allow citizens to bring suits against their government under limited circumstances, where:
The sovereign has explicitly waived their sovereign immunity related to the claims.
The suit is for injunctive or monetary relief against a government official violating federal law.
Sovereign immunity does not protect “sub-divisions” of a state, such as municipalities or school boards.
The lawsuit is brought under Section 5 of the 14th Amendment.
All but one of the defendants falls under the second exception above: The Commonwealth of Puerto Rico. Clemente Properties prays for both injunctive and monetary relief against Puerto Rican officials under federal theories of trademark law. However, Puerto Rico’s potential 11th Amendment claim hinges on a singular question: do the courts consider Puerto Rico a state for the purposes of sovereign immunity?
The Supreme Court’s interpretation of the 11th Amendment centers on the historic common-law theory that all sovereigns enjoy immunity from suit by their citizens without their consent. However, the 11th Amendment explicitly applies only to a state and its agencies.
The District Court of Puerto Rico will likely follow the controlling precedent from the First Circuit. The Circuit has repeatedly found that Puerto Rico enjoys statehood for the purposes of sovereign immunity and Section 1983 claims. The District of Puerto Rico has refused to rule otherwise.[4] This precedent seems to be at odds with the Supreme Court’s view of the relationship between U.S. territories and sovereign immunity. It also seems at odds with the Supreme Court’s view on Puerto Rico’s sovereignty.
The Supreme Court has refused to give clear guidance on the issue.[5] However, it recently tackled the Commonwealth’s sovereignty in Puerto Rico v. Sanchez Valle, ruling that Puerto Rico is not a sovereign separate from the United States for double jeopardy purposes.[6] Federal courts have also ruled against sovereign immunity for the Virgin Islands, due to its territorial status and the control Congress exerts over it (much like Puerto Rico). [7] Though these reviews were obviously limited, the issue could prove interesting if it is ever granted certiorari from the Supreme Court.
It is unlikely that Clemente Properties will take this issue before the Court, as a favorable ruling could have serious ramifications on the island of Puerto Rico and its government. The plaintiffs have made clear they do not intend to prejudice the people of Puerto Rico but rather seek fairness and equity in the use of their father’s mark.[8] They also make solid claims against public officials, who are not protected by the 11th Amendment (as explained above). Clemente Properties could very well win a favorable award from these individuals and forget the Commonwealth altogether. Ultimately, it is more likely this reaches a settlement before anything of legal importance happens.
Britton Yoder is a 2L at Penn State – Dickinson Law, where he serves as President of the Dickinson Law Sports and Entertainment Law Society.
Sources
[1]Plaintiff’s Complaint, Dkt. No. 3:2022cv01373
[2] Bloomberg Law, Roberto Clemente Case Puts Puerto Rico’s Broad Immunity At Risk
[3] Complaint, Dkt. No. 3:2022cv01373
[4] Jusino Mercado v. Com. Of Puerto Rico, 101 F. Supp. 2d (D.P.R. 1999)
[5] Puerto Rico Aqueduct and Sewer Authority v. Metcalf Eddy, Inc., 506 U.S. 139 (1993).
[6] Puerto Rico v. Sanchez Valle, 136 S. Ct. 1863 (2016).
[7] Tonder v. M/V The Burkholder, 630 F. Supp. 691 (D.V.I. 1986).
[8] Roberto Clemente Jr. told Bloomberg Law: “This is in no way something that is directed to the people of Puerto Rico. It’s the system that has done wrong.” Bloomberg Law, Roberto Clemente Case Puts Puerto Rico’s Broad Immunity At Risk.
