While you might expect to see the names Pharrell Williams (hip-hop producer and frontman of N.E.R.D) and will.i.am (the Black Eyed Peas frontman) together on some highly anticipated new album cover, almost the last place you’d expect them to turn up would be on a court docket listing. However, as we’ve seen many times before, the reach of IP knows no boundaries.
In late June, will.i.am (or more accurately, his lawyer…we assume he’s too busy hanging out with someone cool), sent Pharrell a cease and desist notice, demanding that he stop using the name “I Am Other” because it is too “confusingly similar” to will.i.am’s “will.i.am” and “I Am” registered trade marks. “I Am Other” is Pharrell’s new “creativity website” and YouTube channel which aims to encourage its users to “be other” (whatever that means) and to “celebrate the people who push society forward”.
Pharrell has responded by filing a complaint in the United States District Court seeking a declaration that his usage of the phrase “I Am Other” does not infringe, dilute or unfairly compete with will.i.am’s trade marks. US trade mark law protects a trade mark owner’s exclusive right to prevent others from using the mark if it would be likely to cause consumer confusion as to the source or origin of the goods.
Pharrell disputes that this is the case, claiming he uses “I Am” differently to will.i.am. He argues that will.i.am is in fact using the term in a “Seussian way”. What does this mean, you may reasonably be asking? Well, Pharrell is kind enough to provide an example in his statement of claim, actually quoting Dr Seuss’ Green Eggs And Ham:
“Sam I am
I am Sam
I am Sam
Sam I am”
Pharrell states that his use certainly is not intended to convey that “I am Will”.
Although will.i.am applied to register his marks in a wide range of classes, the marks were only accepted in limited (namely entertainment services, fashion design, clothing and footwear). Pharrell claims that:
- will.i.am’s registered marks should be narrowly enforced because the marks co-exist on the registry with a range of other “I Am” marks for related goods (for example, I.AM.HER and AS I AM, both registered for clothing);
- will.i.am’s marks are weak within the entertainment industry, given that the “I Am” phrase has been regularly used in the past (for example, Beyoncé’s 2009 world tour was called the “I Am…World Tour”); and
- the inclusion of “will” and the period between the “I” and “am” in the mark, mean that the marks create different impressions in the marketplace, making consumer confusion unlikely.
Will.i.am, on the other hand, argues that:
- while there may be others who use the term “I Am”, will.i.am is famous;
- he’s invested in a “family” of marks (I Am Scholarship, I Am Home, etc); and
- he has in fact collaborated with Pharrell Williams in the past, which might reasonably lead consumers to believe that “I Am Other” indicates another such collaboration.
This is yet another example of a trade mark dispute involving everyday words, remarkably similar to the lawsuit against Nike in relation to Under Armour’s registered trade mark ‘I will’ (see our previous post here).
If this dispute occurred down under, Australian courts would look at factors such as whether Pharrell’s sign ‘I Am Other’ has been used ‘as a trade mark (ie as a badge to indicate the trade origin of the goods or services) and whether the sign is substantially identical with or deceptively similar to will.i.am’s registered trade marks “will.i.am” or “I am”. A savvy litigant in will.i.am’s position may also consider their rights under the Australian Consumer Law for misleading conduct or representations, and under the common law of passing off.
As mutual friend and collaborator to both artists, Game, said last week in relation to the case: “It is what it is, man”. Word. Who.will.succeed? Hopefully we’ll get another chance to visit TMZ in the name of “research”.