On A Dark Desert Highway, Infringement In The Air?

8.28.17 IN: Public

When you hear the words “Hotel California,” what pops into your head? It is a pretty safe bet to guess that it’s The Eagles hit song from their 1976 album of the same name. The song has been the band’s most popular, and it is easy to get the catchy melody stuck in your head. So, if you were looking for a hotel to stay in and saw one with that name, what would you think then?

The hotel in question is a lovely place (such a lovely place) in Mexico – about 50 miles north of Cabo San Lucas, to be exact. It was first opened in 1950, with the name Hotel California, but since then has changed owners and names over the years. Today, it remains the Hotel California, much to The Eagles’ dismay. In May, the band filed a lawsuit against the owners, claiming trademark infringement and trying to capitalize off the band’s goodwill. The Eagles seek an injunction to stop the hotel from using the name, as well as related profits, damages, and relief.

The issue here, as with most trademark infringement cases, comes down to the consumer. Would the average consumer be confused by the mark, and mistake it as associated with some other mark? Here, The Eagles argue just that. They believe that guests will see the name and assume that the hotel is associated with the song, or perhaps that it inspired the song. They contend that this association is encouraged by the hotel; playing the iconic song throughout the premises and selling related merchandise. The facts here seem to be on the band’s side: many guests have reported in online reviews that they thought the two were in fact affiliated. A “likelihood of confusion” by a reasonable person is the legal standard for infringement—actual confusion is not required. But presenting multiple incidents of actual confusion usually tips infringement scale heavily in favor of the trademark holder.

In June however, the hotel owners responded, stating that the case should be dismissed. The owners claim the band waived its trademark rights when they did not bring suit for some 40 years since the song debuted — in legalese, a “laches” defense. Additionally, the owners claim that they do not intend to mislead consumers, and that the use of the mark is unlikely to confuse anyone.

So the key factors to watch here are the actual consumer confusion present, the length of time before suit was brought, and the fact that the Eagles’ trademark registration is still pending with the United States Patent and Trademark Office. We will keep you updated as this story unfolds!