Here’s the case of a dark, desert highway with, perhaps, a cool wind in your hair: The Eagles Ltd v. Hotel California of Baja.
It concerns a hotel in Mexico that had been opened in the 1950s under the name Hotel California. The owners decided to stop using that name and retitled the property “The Todos Santos Hotel,” catering to American tourists. Recently it was sold again, and the new purchasers went back to using its old name — and proceeded to market it as the “legendary Hotel California.” Promotional literature contained strong allusions that the hotel was the inspiration for the song, such as:
- Hotel California is accessed by driving down a long desert highway from either Los Cabos to the south or La Paz to the east.
- The Mission Church of Pilar is located directly adjacent to the hotel and mission bells are heard daily. Since the Church is so close it sounds like they are almuost [sic] inside the hotel at times.
- Countless stories and firsthand witnesses relating to spirits and ghosts in the courtyard of the hotel.
Not surprisingly, after the new owners filed for trademark registration of HOTEL CALIFORNIA in the U.S.P.T.O, based on their advertising to tourists in the U.S., The Eagles sued the hotel. Right now the case is pending in the District Court of Central California, and is at the pleadings stage (the hotel’s filed an answer to the band’s complaint), with a scheduling order for discovery.
I think this is a potentially problematic lawsuit on behalf of the Eagles, and here’s why:
- They don’t have a trademark for hotel services; and
- They don’t provide hotel services.
Their strongest claim is to enjoin the hotel’s sale of t-shirts and other merchandise associated with rock concerts, for which the band DOES have a registered trademark and IS renowned.
Song and book titles are generally not protectable as trademarks, with some noticeable exceptions. With HARRY POTTER, for example, you have a series of books and characters, and obviously a lot of merchandising and franchise associated with the movies, derived from essentially a book title series.
In contrast, “Hotel California” merely identifies a single song (and the album on which it’s the title track, which originally folded out and came with a poster of the band…). No one is likely to confuse the services provided by The Eagles with those of the hotel. At best, the band might argue that the hotel owners are misleading the consumer as to whether The Eagles ever visited the place or were inspired by the local colitas. But, even if the hotel name suggests that the story is associated with the hotel, it will be difficult to prove that consumers are likely to be confused that the band owns, sponsors, or is otherwise associated with this particular joint.
Alternatively, the complaint implies that by virtue of such a successful song, the band is entitled to bootstrap their title into some kind of a “famous trademark” that is entitled to anti-dilution protection. (Typically, we think of EXXON or TIFFANY’S as examples of famous trademarks.) But in order for that argument to hold any water, they’d have to show their renown in connection with some goods and services – rather than a demonic hotel where “you can check out any time you want, but you can never leave”.
So, I think the band’s claim is unlikely to succeed. And remember, The Eagles’ song is about a very bad hotel experience. Perhaps, regardless of the outcome of this case, somebody in Hotel California’s marketing department should reconsider this experiment in branding….
Mark S. Kaufman
Kaufman & Kahn
747 Third Avenue
New York, NY 10017
Tel. (212) 293-5556
Fax. (212) 355-5009