Recently Pharrell Williams, owner of I Am Other Entertainment, LLC, has sued William Adams (better known as Will.i.am) over a cease and desist letter that Adams sent to Pharrell. Pharrell allegedly received letters from Will.i.am demanding that he immediately stop all use of the phrase “I Am” for his company “I Am Other.” Thinking that further use of the phrase would cause Will.i.am to sue, Pharrell preemptively sued will.i.am on grounds that his phrase “I Am Other” is not likely to be confused with will.i.am or his brand. Pharrell’s suit has claimed that the “I Am Other” mark is a distinctly different use of the phrase, and would not likely be confusing. Pharrell’s attorney is also claiming that his use of “I Am” does not “dilute, or unfairly compete.” In other words, in using “I Am Other,” Pharrell is not overusing, or causing overuse of “I Am” to the extent that it becomes diluted, or less valuable to Will.i.am. Furthermore, the attorney is saying that Pharrell’s use of the phrase will not result in unfair competition with Will.i.am’s business. The lawsuit is merely a preemptive strike by Pharrell in what he believes would have been an inevitable outcome. The case will be taking place in the federal court of New York under the title I Am Other Entertainment, LLC v. William Adams, U.S. District Court for the Southern District of New York, No. 13-4547.
In the famous case of Polaroid Corporation v. Polarad Electronics Corp., 287 F. 2d 492 – Court of Appeals, 2nd Circuit 1961, which took place in New York, the company Polaroid sued a company named Polarad for infringement on their trademarked name. The Polaroid case established a set of standards to determine the likelihood of confusion between two trademarks. Ranging from 7-9, the factors differ from district to district, but operate according to the same standards. Essentially, when considering whether Pharrell’s and Will.i.am’s trademarks are likely to be confused with one another, the following factors should be considered:
Strength of the mark in question – The strength of a mark can be determined by the descriptive nature of the mark, or contrarily, the arbitrary or fanciful nature of a mark. In this case, the phrase “I Am” will likely be argued as a very common term used to describe someone’s personality.
Similarity of the marks – The similarity of two marks is determined by the distinctive characters contained in each phrasing, that is, the letters and/or punctuation that the two marks have in common. In this case, the similarity lies in the common phrasing of the name “Will.i.am” and Pharrell’s company name “I Am Other.” The exact phrase “I Am” appears in each of the trademarks. In his argument, Pharrell has noted the difference in the separation by periods in William Adams’ mark, and the continuity in his own.
Similarity of the goods/services – Similar goods and services are essential to the likelihood of being confused because the more similar two products are, the more likely they will be confused. Both of the artists’ marks relate to the music industry. The “I Am Other” company ranges over a broad spectrum consisting of music, film, television, apparel, tech and multimedia. Will.i.am’s name encompasses many facets of media as well, including entrepreneurship, philanthropy, and of course, music.
Intent in adopting the mark – The relevance of intent lies in the distinction between intentional infringement and accidental infringement. The facts depend on if Pharrell knew of Will.i.am and his operations and deliberately infringed upon the brand. Further, there are different motives within the knowledge of Will.i.am’s general existence as an entertainer. Pharrell could have simply known of Will.i.am and created his brand name knowing, but did so in faith that it would not be confused or would not compete. If Pharrell had created the brand “I Am Other” with the intentions of piggybacking on Will.i.am’s success, or to take consumers away from his brand, then Will.i.am would have a stronger case for infringement.
Sophistication of the consumer – When consumers are more sophisticated, they are less likely to be easily confused. In this case, the general audience of Will.i.am and Pharrell’s hip hop music is teens and young adults, who have a very relevant degree of confusion.
Evidence of confusion – Although direct evidence is not necessary to win a lawsuit, it does help prove an argument for confusion. For this to be a factor, Will.i.am would have to prove that consumers have already been confused by the lack of distinction between “Will.i.am” and “I Am Other.”
In general, trademark lawsuits can prove to be very intricate and complicated by nature of the arguments. The different factors of infringement as provided by the Polaroid case are helpful in determining infringement. Some factors should be given more weight than others, but each of the listed factors should still be considered nonetheless. Using the relevant factors and weighing the degree of guilt, I believe the court will find that Pharrell’s company “I Am Other” has an extremely common and descriptive use of “I Am.” Their use of the phrase describes the personality of the clientele that they wish to serve as “Other” or “something else.” The descriptive nature of the phrase in question makes this a strong case for Pharrell Williams’ freedom to use the name of his company in its current operation.
Author: Michael Bishop