Eagles sue Hotel California over TM infringement
“Hotel California”, perhaps the most popular song of US rock band Eagles, is at the centre of a dispute between the band and a hotel.
In a trademark claim filed at the US District Court for the Central District of California on Monday, May 1, Eagles alleged that a hotel in Todos Santos, Mexico, infringed the mark ‘Hotel California’.
The Mexican establishment is called Hotel California.
“For over 30 years, the Eagles have sold merchandise bearing the trademark ‘Hotel California’, which has come to be associated uniquely with the band,” said the claim.
Eagles also has a pending application, serial number 87/306,414, to register ‘Hotel California’ with the US Patent and Trademark Office for key chains, guitar picks, posters, t-shirts, sweatshirts, bathrobes, and playing cards.
The hotel had originally operated under the name Hotel California in 1950 but subsequently went through name and ownership changes.
In 2001, it was acquired by Debbie and John Stewart who “sought to revitalise the hotel and create a reputation for it, based at least partially on the hotel’s reputed, but false, connection to the Eagles”, according to the claim.
Eagles alleged that the hotel has sold merchandise bearing the ‘Hotel California’ mark to consumers in the US and to US tourists who visit the hotel through its gift shop.
According to the band, the hotel has led consumers to believe that it’s associated with Eagles and that it “served as the inspiration for the lyrics in ‘Hotel California’”.
“Multiple online reviews make clear that US consumers who visit the Todos Santos Hotel and buy defendants’ merchandise do, in fact, believe that the Todos Santos Hotel is associated with the Eagles, which is not the case,” it added.
Eagles are seeking injunctive relief, triple damages, profits, costs and attorneys’ fees, and a jury trial.
Michael Kelber, co-chair of Neal Gerber & Eisenberg’s IP practice, said that the case raises several very interesting issues.
“The Eagles undoubtedly have a strong association with the song ‘Hotel California’ and have sold merchandise bearing the mark for many years,” he said.
Kelber added that given the song's fame, the band will probably be able to get very favourable survey evidence showing that consumers would (apparently mistakenly) believe there is an association or sponsorship between Eagles and the defendant.
“In addition, an ambiguous narrative on the defendant’s website suggests the hotel deliberately obfuscated whether there is a relationship between the hotel and the Eagles’ song,” he said.
However, the case appears to be complicated by the history of the hotel and prior use of the Hotel California name, explained Kelber.
“Still, based on the complaint, the prior use of the name may have been abandoned, so the defendants may be unable to rely on any historical use.”
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Eagles sue Hotel California over TM infringement
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