Nearly 50 miles south of San Diego in Mexico lies an eleven room hotel which is currently making waves for its name, Hotel California, which is also the name of the Eagles classic single and album. The boutique hotel was originally named Hotel California at its 1950 opening but has since undergone several name changes. Ultimately the original name, Hotel California, was revived sometime after a Canadian couple bought it in 2001.

Although the Baja hotel has been around for over 60 years many of us are more familiar with Hotel California being associated with one of America’s greatest rock bands, the Eagles. Both the song and album, “Hotel California,” have arguably become legendary. The album won the 1977 Grammy Award for record of the year and is one of the best-selling albums of all time.

The Eagles recently took issue with the Baja hotel by filing a lawsuit on May 1, 2017 alleging that the hotel is infringing on their common law trademark rights in the name, Hotel California. The band alleges that the hotel is falsely creating an association with the band not only by operating under the name Hotel California, but also by selling merchandise referring to the “legendary” Hotel California and playing Eagles music throughout its facilities. The Eagles do not have a federal registration for “Hotel California” but have asserted their rights on the basis of a federal statute that prevents unfair competition and “false designation of origin.” Courts have consistently expanded the protection for unregistered marks allowing for protection almost as strong as those provided under the federal trademark act. This continued recognition and expansion by courts has allowed entrepreneurs, who may not have the resources to take advantage of federal registration, to assert some kind of rights over their business and product names without federal registration through use.

The Baja Hotel answered the complaint last week by denying the allegations and asserting not only that the Eagles do not have rights in the name but that the Eagles waived their rights in the name by waiting nearly four decades to assert their rights by claiming the defense of laches. Laches is an equitable doctrine that an infringer may assert when a trademark owner inexcusably “sleeps on its rights” and the delay prejudices the infringer. This begs the question, why did the Eagles wait so long to assert their rights to “Hotel California?” The Eagles bring their alibi which at this time is that the hotel operated under a different name for many years until recently changing to Hotel California in 2011. The hotel website outlines a sparse history of the hotel and various names but does distinctly state that “the present owners of the hotel do not have any affiliation with the Eagles, nor do they promote any association” but goes on to state that “many visitors are mesmerized by the ‘coincidences’ between the lyrics of the hit song and the physicality of the hotel and its surroundings.”

At this stage the case is relatively young and the parties positions are still developing, but it will be interesting to see the breadth of rights, if any, the Baja hotel has in the name Hotel California based on the spotty timeline of events which have unfolded since 1950.