Clemente Props., Inc. v. Pierluisi Urrutia

• Docket Number: Civil No. 22-1373 (GMM)
• Decision Date: 22 September 2023
• Citation: 693 F.Supp.3d 215
• Parties: CLEMENTE PROPERTIES, INC., et al., Plaintiffs, v. 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.
• Court: U.S. District Court — District of Puerto Rico

693 F.Supp.3d 215

CLEMENTE PROPERTIES, INC., et al., Plaintiffs, v.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.

Civil No. 22-1373 (GMM)

United States District Court, D. Puerto Rico

Signed September 22, 2023

Tanaira Padilla-Rodriguez, Ponce de Leon Avenue, San Juan, PR, for Plaintiffs.

Jose R. Cintron-Rodriguez, Litigation Division Puerto Rico Electric Power Autority, San Juan, PR, for DefendantsPedro R. Pierluisi-Urrutia, The Commonwealth of Puerto Rico, Eileen M. Velez-Vega, Francisco Pares-Alicea.

Jose R. Cintron-Rodriguez, Litigation Division Puerto Rico Electric Power Autority, San Juan, PR, Lavinia Aparicio-Lopez, San Juan, PR, for DefendantRay J. Quiones-Vazquez.

Gilberto J. Oliveras-Maldonado, San Juan, PR, Victor J. Quinones-Martinez, Sydney Denson LLC, San Juan, PR, for Defendant Puerto Rico Convention District Authority.

OPINION AND ORDER

GINA R. MÉNDEZ-MIRÓ, UNITED STATES DISTRICT JUDGE.

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")(DocketNo. 36); (2)Motion to Dismiss Amended Complaint for Failure to State a Claim Under Federal Rule Of Civil Procedure12(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")(DocketNo. 38); and (3)Motion to Dismiss filed by the Secretary of Sports and Recreation, in his official capacity (DocketNo. 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.(DocketNo. 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 ResolutionsNo. 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 ResolutionsNo. 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 ResolutionsNo. 16 and 17 of 2021, without just compensation; (4) declaratory judgment "decreeing that just compensation for the use of the mark pursuant to Joint ResolutionsNo. 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. § 2201and2202;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 ResolutionNo. 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 ResolutionNo. 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 RegistrationNo. 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 ResolutionNo. 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.(DocketNo. 27).Plaintiffs add that Ciudad Deportiva Roberto Clemente 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.(DocketNo. 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).(DocketNo. 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, 119 S.Ct. 2219, 144 L.Ed.2d 605(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, Def...