The Eagles have sued Hotel California Baja, LLC, in the Central District of California [2:17-cv-03276] for trademark infringement. Hotel California Baja owns a small hotel in Todos Santos, Mexico that opened in 1950 under the name Hotel California, but subsequently went through a number of name changes over the years. The Eagles allege that to revitalize the hotel and create a reputation for it,the hotel has promoted a reputed, but false, connection to the Hotel in the famous Eagles song. The Eagles complain that defendant runs a merchandising operation that manufactures and sells a wide variety of clothing and other merchandise featuring their HOTEL CALIFORNIA mark. There’s not much chance that the Eagle will Take it Easy on this one.
Following up a previous post about the February 2017 lawsuit filed by the Sporting Times against Orion Pictures for depicting a fictional magazine title Sporting Times of the same title in a movie about the life of Bill “Spaceman” Lee, MGM has responded with a Motion to Dismiss. Defendants argue that the use in the movie was not a trademark use, and in any even any theory of a likelihood of confusion was “too implausible to support costly litigation.” The defendants also affirmative asserted a First Amendment bar to the Sporting Times claims, and arguing that the test from Rogers v. Grimaldi applies and the Sporting Times claims should be dismissed unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.
The Motion pointed out the burden of getting permission from every brand potentially appearing in a expressive work, such as defendants movies, and concluded:
Happily for filmmakers and their audiences (and for the creators of other expressive works), the Lanham Act does not grant trademark owners such veto power over the content of expressive works.