By Daniel J Goodman
Approximately 1,300 miles from a corner in Winslow, Arizona is a hotel in Todos Santos, B.C.S., Mexico. Its name? Hotel California. One can only assume that it’s a lovely place with plenty of room for all to live it up and enjoy the beautiful Tequila Sunrise Mexico has to offer. But, according to Grammy award-winning band the Eagles, this New Kid in Town is a downright Desperado trademark infringer. On May 1, 2017, the Eagles filed a complaint in the Central District of California for trademark infringement under § 1125(a) of the Lanham Act and for trademark infringement and unfair competition under California common law.
In case you have terrible taste in music and have never heard of the Eagles (if so, shame on you, but keep reading), they are one of the world’s best-selling bands of all time. The band has sold over 150 million records, 32 million of which are attributed to the 1976 released Hotel California album. The band, and the song “Hotel California,” are instantly recognizable by a large portion of the United States population.
The complaint alleges that in 2001, Debbie and John Stewart bought the existing hotel and changed its name to Hotel California, and have been falsely representing a reputed connection to the Eagles, leading consumers to believe the hotel is “the” Hotel California. I Can’t Tell You Why they didn’t opt for a more suitable business strategy, but it must have been The Last Resort. Defendant Baja LLC also runs a merchandising operation in the Central District of California that manufactures and sells a wide variety of clothing and other merchandise using the Hotel California mark. Consumers, not seeing through the defendant’s Lyin’ Eyes, purchase merchandise from the hotel and stay at the hotel, referring to it “THE Hotel California of Eagles fame,” or in other similar ways in the online reviews.
In its relevant parts, § 1125(a) of the Lanham Act states,
“Any person who . . .uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.”
In other words, trademarks help consumers identify the source of a product or service, and the Lanham Act helps eliminate sales lost from competitors passing off their products as an original, as well as any reputational harm that may occur from confusion. The remedies provided by the Lanham Act include monetary awards in the form of damages or disgorgement, as well as injunctive relief and destruction orders. Additionally, attorney’s fees are also available under exceptional circumstances, a claim the Eagles sets forth in its complaint.
The Eagles allege in the complaint that Baja LLC’s use of “Hotel California” is likely to cause confusion, deceive consumers as to Baja LLC’s association with the Eagles, or deceive consumers as to the sponsorship or approval of Baja LLC’s goods and services by the Eagles. Based solely on the facts and allegations of the complaint, it would appear that Defendant Baja LLC is Guilty of the Crime. (Ok, not a crime, but civilly liable). It’s only been a couple of weeks since the filing of the complaint, but I’ve got a Peaceful Easy Feeling that the defendants will soon be visiting the The Sad Café.