I thought I had written about this, but looking through my blogroll I realized I hadn’t.
The Eagles are suing a hotel in Mexico named Hotel California. Understandably, the Eagles have a problem with the usage, and believe the hotel is borrowing off the success of its famous song. Here’s the problem, they might not be, and, having a problem with something does not equal a cause of action, legally.
Hotel California, by the Eagles, is a song. The Eagles have rights in that song. No one else can play that song, copy the lyrics from the song, make a work based on that work, or in any way copy that song without permission from the Eagles (aside from certain legal doctrines that allow it). They have a valid copyright in Hotel California.
Trademarks are another thing.
The Eagles are claiming the hotel in Mexico has infringed its trademark rights in the term HOTEL CALIFORNIA. In support of this infringement, the Eagles point to a range of merchandise they have sold that includes the words HOTEL CALIFORNIA. They recently applied to register the trademark to support their claimed ownership of the term for merchandising purposes.
The owners of the hotel claim they have been using the name since 1950, well before the Eagles’s song was released in 1976, and before the term was used by the Eagles in any commercial way. In fact, the hotel owner has a trademark registration for HOTEL CALIFORNIA, registered in 1997 with first dates of use claimed to be 1995, and a separate registration for THE HOTEL CALIFORNIA, registered in 2004 with first dates of use claimed to be 1985.
Again, the Eagles are claiming they use the mark for merchandise, not hotels. When a person or business has rights to the use of a trademark, they don’t own the mark across all commercial industries. If the Eagles in fact have rights in the mark for certain types of merchandise, then they own rights to use HOTEL CALIFORNIA for that merchandise. Only if their mark is so famous (specific legal standard for this), would a business that operates hotels be precluded from using the mark.
Hotel California is not a famous trademark. It’s a famous song.
Additionally, the hotel has been around for a long time, and the Eagles have done nothing about its alleged trademark infringement. Waiting such a long time to bring a lawsuit over infringement you’ve known about can be an issue. The law doesn’t like keeping parties in limbo over such things. Whether by a statute of limitations or laches, the Eagles will have a tough time explaining why they took so long to bring this action. And why this is even infringement in the first place.
This one’s a long shot for the Eagles.
Put A Cork In It 