Hard Rock Café International (USA), Inc. (HRCI), the owner of the HARD ROCK trademarks, has sued the owners and operators of the Hard Rock Hotel and Casino in Las Vegas (“HRH”) and the producers and distributors of the reality TV show “Rehab: Party at the Hard Rock” for trademark infringement, trademark dilution, breach of contract, unfair competition and a declaration that the licensing agreement under which the Hard Rock Hotel and Casino operates is terminated.
REHAB is the name for the raucous pool party that takes place every Sunday during pool season at the HRH. In its complaint, filed in the Southern District of New York, HRCI paints a sordid picture of the REHAB pool party, alleging it is a venue for “drunken debauchery, acts of vandalism, sexual harassment, violence, criminality and a host of other behavior that most members of the general consuming public…would find unseemly and objectionable” and that it sullies the goodwill of the HARD ROCK trademarks. And all this so-called “debauchery” is available in living color to 93 million households across America because REHAB is the subject of a reality TV show on the truTV network.
HRCI alleges that the HRH companies breached the license agreement by allowing and encouraging the airing of the “Rehab: Party at the Hard Rock” TV show, by allowing the HARD ROCK mark to be used in the title of the show, and by allowing the HARD ROCK mark to become associated with “unsavory, offensive conduct.” HRCI also alleges that by authorizing the title “Rehab: Party at the Hard Rock” without clearing it with HRCI first, the HRH companies have caused actual and likely confusion that HRCI approves or endorses the behavior depicted at REHAB. HRCI even includes direct quotes from customers stating that they will never patronize a HARD ROCK establishment again, thanks to the behavior shown on the TV show.
On top of that, HRCI takes the HRH companies to task for using the acronym “HRH” as a trademark, alleging that the HRH companies are attempting to create a sub-brand with goodwill independent from the HARD ROCK marks. However, HRCI has at least one registration for the HRH trademark and the license agreement specifically forbids the HRH companies from developing any HARD ROCK marks without the express consent of HRCI. HRCI also calls the HRH companies on the carpet for allegedly sub-licensing the HARD ROCK marks to two Indian casinos, one in Tulsa, Oklahoma and one in Albuquerque, New Mexico. Not because they are Indian casinos, but because the graphic version of the HARD ROCK mark used to advertise the casinos isn’t a version authorized by the license agreement or one that is generally used by HRCI and wasn’t approved by HRCI.
Finally, HRCI alleges that the HRH companies have registered or caused to be registered at least 63 domain names that incorporate the HARD ROCK or HRH marks, all in violation of the license agreement.
So what does HRCI want in recompense for this litany of bad behavior? Oh, nothing too much, just a declaration that the license agreement is terminated; a permanent injunction against all the defendants and their sub-licensees prohibiting them from using any HARD ROCK mark in connection with any good or service; the transfer of all those HARD ROCK and HRH-containing domain names; the destruction of pretty much everything the defendants may have that bears any of the HARD ROCK or HRH marks; an accounting of profits; consequential damages, and; attorney’s fees and costs.
Leaving aside the potential large sum of money involved, that permanent injunction is serious business. The Hard Rock Hotel and Casino in Las Vegas has been around since 1995. That’s an awful lot of money-making history (read: goodwill) to just throw away. Plus, the hotel casino has a huge guitar sticking out of it; what other brand would want to take over that space when you have that to deal with?