Pharrell may currently hold the #1 and #2 spots on Billboard’s Hot 100, but in the past few weeks, he made headlines due to his ongoing trade-mark dispute with Will.i.am (coincidentally, the last band to hold both the #1 and #2 spots was Will.i.am's band, The Black Eyed Peas).
On July 1st, Pharrell’s i am OTHER Entertainment filed a complaint in the Southern District of New York against William Adams (Will.i.am) and I.AM.Symbolic seeking a declaration of non-infringement of Will.i.am’s family of marks including "WILL.I.AM" and "I AM."
Will.i.am opposes the registration of "I AM OTHER." Will.i.am owns a trade-mark for "I AM" in connection with clothing, live music, and entertainment. His initial cease-and-desist letter claims that due to his work and high profile, his goods and services have acquired goodwill. His concern is that due to professional proximity as famous musicians and a history of collaboration, consumers will think that the "I AM" portion of the mark indicates that he approves of Pharrell’s venture or is involved with iamother.com.
Conversely, Pharrell argues that Will.i.am’s rights over the term "I AM" are weak, citing numerous rejected applications by Will.i.am as well as the large number of marks registered prior to Will.i.am that utilize the phrase. In class 3 cosmetic and perfume goods alone there are over 30 co-existing registered marks that utilize the phrase "I AM." Pharrell further claims that "OTHER" is the dominant feature of his mark - indicating the philosophy of his venture - while Will.i.am’s dominant feature is WILL - indicating the artist’s name.
I AM is also a common phrase in the music industry and in pop culture. Will.i.am may be a reference to Dr. Seuss’ Green Eggs and Ham’s "Sam I Am," to Descartes' “I think therefore I am,” and/or Popeye’s catchphrase - “I yam what I yam.” Pharrell claims that there are at least 146 instances of musical groups using the phrase I Am. In 2008, it was the name of Beyoncé’s 5 Grammy award-winning album, I Am…Sasha Fierce, and I Am Beyoncé is the name of her Tumblr.
Pharrell suggests that Will.i.am’s argument in this case runs counter to his position in a request for reconsideration of a denied class 3 perfume trade-mark application. In the request, Will.i.am pointed out that his perfume and the perfume of Danica Siegel led to distinctive commercial impressions in the marketplace. He further argued that simply having marks with an identical portion did not necessarily mean that the marks would cause confusion. His position was that there would not be consumer confusion so long as they did not market the products in a way to create the assumption that they originated from the same source. He claimed that high end perfume consumers are highly sophisticated consumers who can determine a good’s source.
According to Will.i.am, Pharrell’s use of his reconsideration application may not be an apt comparison to the matter at hand. In this case, both parties are high profile musicians who have worked together in the past. None of the other registrants in the reconsideration example had a high profile nor had they collaborated with Will.i.am. Even if consumers are discerning, the close association with the two artists' work and their products may lead to confusion in this case.
In my opinion, if the brands are closely associated with their respective celebrities, then it would make sense that the products are dependent on marketing to fans intent on seeking out those products that have such a deliberate connection. Fans who would be enticed to purchase celebrity-endorsed goods will presumably be knowledgeable enough about that particular celebrity's work and endorsements to distinguish their wares or goods from that of others. In fact, it is possible that fans could be considered sophisticated and informed consumers in the market of celebrity brand lines. The question is whether the "discerning fan" is of any interest to the court in deciding such a case.
The sheer amount of publicity this trade-mark dispute has garnered could mean that even average consumers who do not follow Pharrell and/or Will.i.am will be aware of the dispute and be able to distinguish between their marks. For example, the Canadian standard for confusion is a consumer of average observation in somewhat of a hurry. The high profile of those involved with the dispute means that it is now widely publicized and potentially (depending on how public the feud remains) common knowledge to the average consumer that i am OTHER is Pharrell’s online venture, one that is not associated with Will.i.am’s family of trade-marks. Whether or not this will be considered by the courts remains to be seen.
Allison McLean is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.