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The Eagles Sue Hotel California

May 02, 2017
Post by Brandon W. Clark

On a dark desert highway, cool wind in my hair
Warm smell of the courtroom, rising up through the air
(sorry)

Earlier this week, The Eagles sued a Mexico based hotel, aptly named Hotel California, alleging trademark infringement and unfair competition. The case, filed May 1, 2017, isEagles Ltd v Hotel California Baja LLC et al, U.S. District Court, Central District of California, No. 17-03276, and alleges that a small hotel in Todos Santos, Mexico is illegally using and capitalizing on the band’s HOTEL CALIFORNIA trademark.

The Eagles are a band that formed in 1972 and released their most successful album (and song),Hotel California, in 1976. To date, the album has sold an estimated 32 million copies worldwide.  After the success of the album, the band began marketing and selling a wide variety of merchandise under the HOTEL CALIFORNIA mark including t-shirts, posters, sweatshirts, bathrobes, keychains, playing cards, mugs, guitar picks, and refrigerator magnets. With respect to this lawsuit, the band claims common law trademark rights in the HOTEL CALIFORNIA mark for the goods listed above and also cite a pending application to register the mark with the United State Patent and Trademark Office (USPTO). The application, Serial No. 87/306,414, was filed January 18, 2017 (with first use dates ranging from 1977-2013) for key chains, guitar picks, posters, t-shirts, sweatshirts, bathrobes, and playing cards.

The Eagles claim that Debbie and John Stewart purchased a small hotel in Todos Santos, Mexico in 2001. The hotel had originally opened under the Hotel California name in 1950 but subsequently went through various name and ownership changes. The complaint states that when the Stewarts purchased the hotel, they changed the name to “Hotel California” and attempted to revitalize the hotel based, at least partially, on the hotel’s false connection to the Eagles.

Additionally, the band claims that the hotel runs a merchandise operation that manufactures and sells a broad range of clothing and other merchandise featuring the HOTEL CALIFORNIA mark.  The Eagles assert that the hotel advertises and sells merchandise to U.S. consumers who visit the hotel under the false belief that the hotel is associated with the Eagles. Further, the band alleges that the hotel plays the song “Hotel California”, and other Eagle’s songs throughout the hotel, and sells t-shirts in the gift shop that refer to the hotel as “legendary”, again falsely representing an association with the band.

The band alleges that the hotel’s acts constitute willful trademark infringement, are likely to cause confusion or mistake, and deceive as to the hotel’s affiliation, connection, or association with the band. Along with monetary damages and attorney’s fees, the band is asking that the hotel be prohibited from using the HOTEL CALIFORNIA mark in association with the band’s goods or services (including clothing and accessories) and acting in any way that is likely to induce the false belief that the hotel is legitimately connected or associated with the band.

This will likely be a very interesting case, so please check back, as we will provide updates to this post as the lawsuit moves forward.  

Brandon W. Clark is the Chair of the Copyright, Entertainment, and Media Law Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Brandon directly via email at brandon.clark@ipmvs.com.


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