207 F. Supp. 3d 129
D.P.R.2016Background
- Comite Fiestas de la Calle San Sebastian, Inc. (Comite) sued Mayor Carmen Yulín Cruz and the Municipality of San Juan (MSJ) under 42 U.S.C. § 1983 and federal/state trademark law, asserting claims for trademark infringement (Lanham Act and Puerto Rico law), First Amendment violations (political discrimination, free association, free exercise, free speech retaliation), libel, and bad-faith contracting.
- The parties signed a 2015 Lease/Assignment Contract granting the Comite use of Plaza del Quinto Centenario and twelve kiosks for cultural activities; MSJ retained responsibility for municipal services and sponsor/exclusive sponsor arrangements.
- The Comite claimed ownership of several marks ("La SanSe," "Fiestas de la Calle," and "Fiestas de la Calle San Sebastian") and alleged MSJ and contractors (Buena Vibra Group, San Juan Family Entertainment) used the marks or displaced traditional religious/cultural programming for political cronies.
- Defendants produced additional discovery after sanctions; the court found most production compliant but declined to accept as fact a disparate-treatment statement proposed by Comite.
- On summary judgment the court deemed many of defendants’ factual statements admitted (Comite failed to comply with Local Rule 56), considered a limited set of properly supported factual disputes in Comite’s favor, and evaluated each federal claim on the record.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Trademark infringement (Lanham Act & PR law) — ownership and distinctiveness of marks | Comite claims longstanding ownership/use and secondary meaning for FCSS mark and other variants | Defendants argue marks are generic/descriptive, not entitled to protection; Comite failed to prove ownership | Court dismissed claims as to "La SanSe" and "Fiestas de la Calle" for lack of proof; held "Fiestas de la Calle San Sebastian" lacks secondary meaning (generic/descriptive) — trademark claims granted for defendants |
| Political discrimination / freedom of association | MSJ favored contractors allied with mayoral party and discriminated against Comite for political reasons | Defendants say Comite is apolitical and no evidence shows MSJ awareness of Comite political affiliation or opposing affiliations | Court held Comite failed to establish prima facie case (no proof of opposing affiliation or MSJ awareness) — claim dismissed |
| Free exercise / RFRA | MSJ allegedly sought to exclude or diminish Comite’s religious elements of FCSS (masses, procession, honors), thereby burdening religious exercise | Defendants say no law, ordinance, or action prevented religious exercise; Comite was able to conduct religious events and held ceremonies/masses; no substantial burden shown | Court found no law or substantial burden; RFRA and constitutional free-exercise claims dismissed |
| Free speech / retaliation | MSJ displaced traditional cultural/religious programming and allegedly retaliated for Comite member’s negative comments about mayor | Defendants contend programming decisions were coordinated and no adverse action or knowledge linking statements to adverse measures shown | Court found no evidence MSJ knew of the statements or imposed adverse contractual terms; free-speech/retaliation claims dismissed |
| Libel (Puerto Rico law) | Mayor made false public statements (e.g., "cooking the accounting books") causing loss of sponsors | Defendants argue lack of falsity proof and official-capacity immunity; plaintiff offered insufficient evidence of falsity/damages | Court held plaintiff failed to prove statements false; libel claim dismissed |
| Puerto Rico good-faith contracting (state law) | Comite alleges MSJ negotiated in bad faith | Defendants moved to dismiss on supplemental-jurisdiction grounds after federal claims were dismissed | Court declined supplemental jurisdiction over remaining state contract claim and dismissed it without prejudice |
Key Cases Cited
- Dunn v. Trs. of Bos. Univ., 761 F.3d 63 (1st Cir.) (summary judgment genuine-dispute standard)
- Tobin v. Fed. Exp. Corp., 775 F.3d 448 (1st Cir.) (summary judgment and burden on nonmovant)
- Caban Hernandez v. Philip Morris USA, Inc., 486 F.3d 1 (1st Cir.) (importance of compliance with local summary-judgment rules)
- Oriental Fin. Grp., Inc. v. Coop. de Ahorro y Credito Oriental, 698 F.3d 9 (1st Cir.) (Lanham Act analysis for unregistered marks)
- Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1 (1st Cir.) (mark distinctiveness spectrum)
- Board of County Comm’rs v. Umbehr, 518 U.S. 668 (U.S.) (First Amendment protections for independent contractors)
- Decotiis v. Whittemore, 635 F.3d 22 (1st Cir.) (retaliation standard and adverse action)