Legendary rock band Eagles, Ltd. (The Eagles), filed suit on May 1 against the owners of the Hotel California Baja LLC in the U.S. District Court for the Central District of California. The suit alleges trademark infringement and common law unfair competition by the owners, Debbie and John Stewart (owners).
The hotel originally opened in the 1950s under the name Hotel California, decades before the rock band released its hit song by the same name. However, since opening, the hotel has gone through multiple name and ownership changes, most recently as the Todos Santos Hotel. On Nov. 16, 2015, the defendants filed a trademark application at the U.S. Patent and Trademark Office to register use of the name HOTEL CALIFORNIA on goods, such as T-shirts and other clothing.
This lawsuit raises a number of important issues and will be an interesting one to follow. For example, one issue that is sure to be addressed is whether The Eagles have any trademark rights in the song name. Generally speaking, use of a word or phrase in a song does not create trademark rights in that name. However, titles of individual works may be protected under unfair competition laws if the term has acquired a secondary meaning, such as through use of the term on products or services offered by the band.
In addition, the defendants may argue that they have prior rights in the name, as the hotel began using the name in the 1950s. However, it is also possible that the defendants have abandoned any right to the trademark. Under the Lanham Act, abandonment of a trademark may be presumed after three years of non-use. It may be difficult for the defendants to prove consistent use of the mark for over six decades when there is evidence of numerous name and ownership changes associated with the hotel.
While The Eagles do not have an official trademark registered with the U.S. Patent and Trademark Office, they claim to have acquired common law rights to the mark through many years of merchandising. The Hotel California Baja has been operating and selling merchandise under the name for over a decade. This case is also interesting in that it appears The Eagles did not dispute the hotel’s use of the name until the hotel filed for protection of the mark with the Patent and Trademark Office.