American rock band the Eagles (via the company owned by the band) is suing a Todos Santos, Mexico hotel for capitalizing off their song of the same name. “Hotel California” is the title track off the album Hotel California that was released in 1977. It reached #1 on the US Billboard Hot 100 chart. The trademark infringement complaint was filed on May 1st, in the United States District Court for the Central District of California.
According to the facts in the complaint, since the late 1970s, the Eagles have marketed and sold merchandise under the HOTEL CALIFORNIA mark, including t-shirts, posters, sweatshirts, bathrobes, key chains, mugs, guitar picks, and magnets. The group states that it owns common law rights in the mark, and it filed a trademark application with the United States Patent and Trademark Office in January of this year for use with those goods. “As a result of Plaintiff’s longstanding advertisement, promotion, and sale of goods and services in connection with the HOTEL CALIFORNIA Mark, HOTEL CALIFORNIA has developed substantial consumer recognition and valuable goodwill, and such goodwill had become uniquely identified with Plaintiff and the Eagles.” In 2001, Debbie and John Stewart bought the hotel, named the Hotel California in the 1950s but had become the Todos Santos Hotel, and began marketing it as “Hotel California.”
Baja LLC runs a merchandising operation in California and sells clothing and merchandise featuring the Eagles’ HOTEL CALIFORNIA mark. “Defendants advertise and sell their Infringing Merchandise directly to consumers in the United States…Defendants also advertise and sell their Infringing Merchandise to U.S. consumers who visit the Todos Santos Hotel under the false belief that the hotel is associated with the Eagles…Consumers who visit the hotel and purchase Defendants’ merchandise then return to the United States with the Infringing Merchandise and inform others that they have ‘visited’ Hotel California made famous by the Eagles.” The suit further alleges that the hotel actively encourages visitors to believe that the hotel is associated with the Eagles to make sales and that the song “Hotel California” and other Eagles songs are played frequently. The hotel is even referred to as “legendary” by the defendants, a suggestion that the Eagles are connected to the place or have visited.
The Eagles assert that the hotel and retailer’s actions are likely “to cause confusion or mistake, or to deceive as to Defendants’ affiliation, connection, or association with Plaintiff, or as to the origin, sponsorship, or approval of Defendants’ goods and services.” The group also alleges that the defendants’ acts have been damaging and will continue to be. The Eagles are seeking a preliminary and permanent injunction, damages, profits, and attorneys’ fees.
The case is Eagles, Ltd. v. Hotel California Baja, LLC, CV-17-3276, Central District of California.
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