Roberto Clemente Case Puts Puerto Rico’s Broad Immunity at Risk

A trademark lawsuit by the sons of baseball legend Roberto Clemente will likely test whether Puerto Rico enjoys the same sovereign immunity as states under the US Constitution, attorneys say.

Clemente Properties Inc. alleges Puerto Rico infringed its trademarks by selling Roberto Clemente commemorative license plates. Puerto Rico hasn’t yet responded to the litigation, but could claim sovereign immunity under the 11th Amendment, which the US Court of Appeals for the First Circuit said in the 1980s applies to the commonwealth.

That claim could open the door to the US Supreme Court overturning the First Circuit and limiting Puerto Rico’s immunity in intellectual property cases, if not more broadly, attorneys say.

Scholars don’t all agree that the 11th Amendment—which shields all “of the United States” from any federal suits brought “by citizens of another state”—applies to Puerto Rico. The Supreme Court hasn’t directly addressed the matter. The Clementes said they’ve anticipated the immunity defense and plan to take the issue to the high court if necessary.

“Only the First Circuit thinks Puerto Rico is basically a state for all purposes,” constitutional law professor Ernest A. Young of Duke University said. Young said he’s “doubtful” Puerto Rico qualifies for 11th Amendment immunity, as “it’s something states have by virtue of being states, and Puerto Rico isn’t one.”

The Supreme Court extended a common-law immunity to territorial and other non-state governments—including to Puerto Rico—more than a century ago. But that immunity can generally be overridden by Congress, Young said.

Laws purporting to limit 11th Amendment immunity from various intellectual property violations already exist. And while they’ve been deemed unconstitutional as applied to states by the Supreme Court, they may well still bind Puerto Rico.

“What the current SCOTUS will do with PR’s sovereignty is a good question,” intellectual property and constitutional law professor Jessica Silbey of Boston University said in an email.

System ‘Has Done Wrong’

Roberto Clemente’s three sons, who operate Clemente Properties, accused Puerto Rico of infringing their registered trademark rights and violating the “takings” and “due process” clauses of the constitution in their complaint last month.

They said the license plates—to celebrate the 50th anniversary of Clemente reaching 3,000 career hits—cost $21. Clemente died in a 1972 plane crash while delivering aid to earthquake victims in Nicaragua, three months after his 3,000th hit.

Roberto Clemente Jr. said “it really hurts us that we had to go this route,” adding that he and his family “truly believe a conversation would have really avoided this nonsense.”

“We’ve always really carried the Puerto Rico flag in our heart,” Clemente Jr. said. “This is in no way something that is directed to the people of Puerto Rico. It’s the system that has done wrong.” The complaint said the family had been falsely attacked online for using his name to obtain money from Puerto Ricans for their own benefit.

Multiple departments of Puerto Rico’s government didn’t return requests for comment, and attorneys for the commonwealth have yet to appear in the case.

Roberto Clemente receives the ball from the umpire after making his 3,000th career hit on Sept. 30, 1972.

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Degrees of Sovereignty

Supreme Court decisions in 1912, 1913 and 1937 confirmed Puerto Rico’s sovereign-like immunity, based on federal law designed to grant local self-government to “Porto Rico,” combined with “the general rule exempting a government sovereign” from suit.

But it wasn’t until a 1981 First Circuit opinion in Ezratty v. Commonwealth of Puerto Rico that the 11th Amendment question was addressed head-on. Then-Circuit Judge Stephen Breyer penned the opinion finding that “the principles of the Eleventh Amendment, which protect a state from suit without its consent, are fully applicable to the Commonwealth of Puerto Rico.”

Two years later, another First Circuit panel—which included Breyer—again held that “Puerto Rico, despite the lack of formal statehood, enjoys the shelter of the Eleventh Amendment in all respects.”

But Young said that “was a different era of sovereign immunity law,” which was “much more flexible.” The approach changed after the Supreme Court’s 1996 decision in Seminole Tribe of Florida v. Florida, from which then-Justice Breyer dissented. That opinion raised the bar for abrogating 11th Amendment sovereign immunity.

While “everyone agrees” a general immunity from suit exists for non-state governments like Puerto Rico’s, the question is whether “they have this super-constitutional immunity that can’t be overriden by Congress,” Young said.

With the First Circuit’s precedent well established, only the Supreme Court could remove the island’s 11th Amendment protection. There might not be a “biting circuit split” on the issue for Puerto Rico, but precedent regarding territories might provide an avenue for the Clementes to “conjure up a circuit split,” intellectual property law attorney James L. Lovsin of McDonnell Boehnen Hulbert & Berghoff LLP said.

States and Territories

Should the high court strip Puerto Rico of the same broad immunity that states enjoy, the commonwealth could also lose the benefit of a number of post-Seminole Tribe Supreme Court rulings shielding states from intellectual property claims.

Under Seminole Tribe, Congress can abrogate the 11th Amendment through law if the intent to do so is clear, and if it’s exercising a valid constitutional authority. But several legislative attempts in the intellectual property arena have since failed Seminole Tribe’s heightened standard.

The Patent and Plant Variety Protection Remedy Clarification Act, passed in 1992, was gutted by 1999’s Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank. The high court held that the Constitution’s intellectual property clause alone didn’t itself give Congress the authority to nix states’ immunity in patent cases. It also said abrogation based on the 14th Amendment’s “due process” clause is allowable only as a proportional remedy for a pattern of unconstitutional activity by states—a pattern not apparent in the area of patent infringement.

On the same day—in companion case College Savings Bank v. Florida Prepaid—the court said the Trademark Remedy Clarification Act also failed. More than two decades later, the high court held the same regarding the 1990 Copyright Remedy Clarification Act in Allen v. Cooper.

But those decisions holding the statutes unconstitutional as applied to states don’t erase them from the books, Young said. If the Supreme Court found Puerto Rico wasn’t “one of the United States” for 11th Amendment purposes, it’s possible laws like the TRCA may still apply to non-“state” governments including Puerto Rico’s, opening the door for the Clementes’ suit to move forward.

A “decent Lanham Act claim” of trademark infringement or false association therefore “might be their best shot,” Young said of the Clemente sons. The Lanham Act explicitly extends to “any state” or “instrumentality of a state” to “the same extent as any nongovernmental entity.”

Young noted that US law says “Puerto Rico should be treated as a ‘state’ for purposes of federal statutes.” So the TRCA may be using a different, broader meaning of “states” than the 14th Amendment, which would be “the worst of both worlds” for the commonwealth,” he said. In that case, Congress’ power in Article 4 to regulate the territories might provide the authority to override Puerto Rico’s immunity.

Sanches Valle

Boston University’s Silbey said the most clear guidance on Puerto Rico sovereignty was in the 2016 decision Puerto Rico v. Sanches Valle. That case deemed the US and Puerto Rico the same sovereignty for the purposes of double jeopardy, finding both governments couldn’t successively prosecute the same conduct.

“Whether that’s specific to criminal law or not, it seems to be an open question,” Silbey wrote. “But the TRCA does waive federal immunity, which I would think would be territorial immunity, if Puerto Rico is considered a territory not a state. And Congress can waive federal immunity to its own laws; it just can’t force the states to.”

The Clementes believe the Sanches Valle ruling and others allowing a congressionally created financial oversight board to be sued have recently undercut the notion of state-like sovereignty.

It may seem strange that a Roberto Clemente commemorative license plate could be what dooms Puerto Rico to losing its full 11th Amendment immunity and subjecting it to congressional abrogation. But Lovsin said that didn’t strike him as odd, noting that the CRCA fell in a case involving documentary footage of an underwater pirate ship.

“These disputes with a state crop up in odd ways.”