We’re deep in the throes of winter, and spring training won’t start for another month, but for those of you who are fans of the National Pastime — particularly if you are like us and a child of 1970’s baseball — then be sure to check out the U.S. Court of Appeals for the First Circuit’s recent opinion in Clemente Properties, Inc. v. Pierluisi-Urrutia, No. 23-1922 (Jan. 16, 2026).
The court had before it case where the owner of the trademark of the great Roberto Clemente (his family) sued officials of the Commonwealth of Puerto Rico, after the Commonwealth used a likeness of Clemente on commemorative license plates, among other things. The claims included not only Lanham Act, but also a claim for a taking without compensation. The district court tossed both claims.
Most of the opinion is dedicated to the trademark stuff. We’re just country takings lawyers and all this intellectual property stuff goes right over our head. But from what we can gather, the First Circuit revived the Lanham Act claim, concluding that the public thought that the family was making money from the Commonwealth’s use of Clemente’s likeness. Turns out only the Commonwealth was benefiting.
If you are a student of IP, this one is for you.
We takings lawyers need to jump to page 58 of the slip opinion. The court rejected the family’s claim this was a categorical physical invasion taking, concluding that the complaint failed to plausibly plead such a claim. The property here is “intangible,” and you can’t “physically” invade something that is intangible:
A straightforward application of these principles, as urged by the Commonwealth Defendants, suggests that the district court correctly determined that appellants failed to plead a plausible categorical taking. Indeed, appellants concede that their “property interests aren’t susceptible of ‘physical invasion’ . . . because they are intangible.” Thus appellants
cannot establish a categorical physical taking.
Slip op. at 61.
The First Circuit also rejected the physical-taking-by-analogy which the family made. Even if this is not a true physical takings situation, they argued, the theories line up because the government appropriated the trademark, even if the trademark only exists in the mind and the law. The court seemed intrigued (“This is a relatively novel argument that we have not previously decided and was not considered by the district court.”). But intrigued or not, the court said no:
We do not think that infringement of intangible intellectual property can be analyzed using the same categorical approach as takings involving the physical possession or occupation of property.
Slip op. at 62. The court concluded that “there is a meaningful difference between small or partial invasions of physical property, as opposed to intangible property.” Slip op. at 66. Relatively minor physical invasions actually displace the owner from that space. But “[u]se of a trademarked word or image does not necessarily have the same effect.” Slip op. at 67 (citing Jim Olive Photography v. Univ. of Houston Sys., 624 S.W.3d 764, 776 (Tex. 2021)).
Now this doesn’t mean that trademark infringement can’t also work a taking, only that it isn’t a categorical taking.
Check it out. Even if you disagree with the result, or are not a Lanham Act fan. The opinion is written for baseball lovers and you will find it enjoyable. See, e.g., slip op. at 70 (“After marching through the arguments regarding appellants’ two substantive federal claims against the Commonwealth Defendants, we’ll take a quick seventh-inning stretch here and remind the reader of the score.).
Clemente Properties, Inc. v. Pierluisi-Urrutia, No. 23-1922 (1st Cir. Jan. 16, 2026)