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Song Titles and Trademarks: The Eagle(s) Have Landed

Posted in First Amendment, Goodwill, Infringement, TTAB

Regardless of whether you’re a fan of “classic rock,” there are some songs that everybody knows. The song Hotel California by the Eagles is one of those songs.  Not everyone likes the Eagles (looking at you, Dude), but most people at least like Hotel California. So it’s no surprise that the Eagles want to prevent others from trying to make money off the name. Most recently, the band filed an opposition with the Trademark Trial and Appeal Board to oppose an application to register the mark HOTEL CALIFORNIA (the pleading is available here).

Eagles Album Cover

 

The application is owned by Hotel California Baja LLC (HCB), who apparently operates a hotel south of the border in the town of Todos Santos in Baja California, Mexico. Notably, HCB’s application does not seek registration in connection with “hotel services.” Instead, HCB appears to be seeking registration of its name to sell a wide variety of merchandise in the U.S., including cosmetics, body care products, eyewear, phone accessories, jewelry, and other products. Although the Eagles do not allege that they own any trademark registrations for the HOTEL CALIFORNIA mark, the band claims common law rights in connection with licensed goods such as clothing, guitar picks, posters, and others back to 1977. Along with the Notice of Opposition, the band filed an application to register the mark on Jan. 18, 2017.

But do the Eagles have trademark rights in the song name? We’ve broached the subject briefly before (here). Generally speaking, use of a word or phrase as a song, album, or movie title does not create trademark rights in that name because consumers aren’t likely to view such use as designating the source of the goods. Instead, consumers are likely to view the use simply as a title of a creative work, or some other expressive content. The issue is similar to merely ornamental refusals, where a name or phrase is used on a shirt, coffee mug, etc. as a design element or as informational phrase (like my BEST BLOGGER EVER mug, or a FEAR THE BROW t-shirt). However, it is possible through licensing the name and/or using the name on other products or services that the mark can come to signify a secondary source. Based on the pleadings, it appears that the Eagles may have a reasonable claim that the HOTEL CALIFORNIA mark, when used on licensed products, serves as a source identifier.

Even then, it’s possible the Eagles could claim that the mark falsely suggests an association with the band. HCB’s website includes the following information as part of its “history”:

During the 1960s and 1970s, the precise details of the hotel’s history are a bit “hazy” – not uncommon for the culture of that particular era in general… There are numerous stories. Whether fact or myth, nobody knows for sure. However, one rumor, fabricated in the 1990’s by someone with no connection to any owners of the hotel, states that the Eagles once owned it. This is unequivocally false. Many of the other legends are less black and white and continue to fascinate the public. Although the present owners of the hotel do not have any affiliation with the Eagles, nor do they promote any association, many visitors are mesmerized by the “coincidences” between the lyrics of the hit song and the physicality of the hotel and its surroundings.

  1. Hotel California is accessed by driving down a long desert highway from either Los Cabos to the south or La Paz to the east
  2. 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 almost inside the hotel at times
  3. Countless stories and firsthand witnesses relating to spirits and ghosts in the courtyard of the hotel.
  4. During the ‘Hippie Era” of the 1960s and 1970s, people were know to easily grow their own marijuana in the extremely fertile land of the Todos Santos area and then roll them into “Colitas” which is a Mexican slang term for ‘Joint” or Marijuana cigarette
  5. The simple fact that the Hotel California in Todos Santos was built in 1947 which was of course far before the “Hippie” or “Classic Rock” eras

It certainly seems like the hotel is trying to suggest an association with the band and the song. Accordingly to the Eagles (via Wikipedia), there is no “Hotel California,” as the hotel was more symbolic of Hollywood and L.A. generally. If the Board were to find that the use of the HOTEL CALIFORNIA does create a false association with the band, then the disclaimer is not likely to help. Even if HCB claims that the rumor was started by “someone with no connection to any owners of the hotel.”

HCB’s website does not clarify whether guests are allowed to “check out” or, more importantly, “leave.” Luckily for the applicant though, the Trademark Office does allow them to voluntarily abandon the application.