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Trademarks and music: No longer living it up at ‘The Hotel California’

17-02-2017

Seminal US rock band The Eagles is best known for its 1977 hit song 'Hotel California'. The band gave its last concert in 2015, but the musicians have now reunited for a different purpose, as Novagraaf’s Theo Visser explains.

The band has opposed an application for the word mark 'Hotel California' by Mexican company Hotel California Baja LLC (HBC). The application has been submitted, not for hotel services, but for a large number of other products, including cosmetics, personal care, glasses, phone accessories and jewellery. The Eagles do not have a trademark registration for 'Hotel California', but the band did submit an application to register the word mark at the United States Patent and Trademark Office (USPTO) at the same time the opposition was filed. The band is claiming trademark rights based on usage since 1977.

The Eagles also pointed out that the HBC wrongfully suggests in its application that they are using the brand in collaboration with The Eagles. Parts of the lyrics of' Hotel California' appear on the HBC website, suggesting that the company is deliberately trying to associate itself with the band and the song.

‘New kid in town’
We have written before how emerging artists may prefer to focus more on making music than on IP issues, but that this can lead to nasty disputes and sour notes down the line.

Although a band’s name – or the name of its successful songs – may not seem very important to the musicians at the time of a group’s creation, it is one of its most valuable assets, particularly when it comes to merchandising. Therefore, as part of the establishment process, and as with any brand, it is advisable for bands to undertake a trademark search to check that no one else is already using the chosen name (Find out more about trademark searching).

Trademark registrations in appropriate territories and classes will then shore up the band’s right to use its chosen name moving forward. With the range of merchandising activities now so varied, these should extend beyond the obvious goods in classes 9 (video/sound recordings) and 41 (entertainment services) to cover additional products and services.

As with The Eagles and ‘Hotel California’, it is possible to argue for acquired distinctiveness much later down the line, e.g. in the case of opposition proceedings. However, protecting the band’s name or musical titles in this way isn’t just a means of avoiding disputes later down the line, it’s also a method of protecting and growing its value as an asset. Taking the necessary steps at the start – clearing the name, registering it and clarifying ownership – is crucial if a group is to ensure the use of the name without risk of infringement – or arguments between band members. Most importantly, it leaves the band free to do what it really wants to do: create music.

Theo Visser is a consultant and partner at Novagraaf in Amsterdam