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Ultra Music Publishing responds to Sony Music’s Ultra trademark claim

By | Published on Monday 23 January 2023

Ultra Records

Ultra Music Publishing has formally responded to a lawsuit filed last year by Sony Music which, as the now sole owner of the Ultra Records label, wants the Ultra music publisher to stop using the Ultra name.

Both the publisher and the label were founded by Patrick Moxey and they originally operated as sister companies. Sony first bought into the label in 2012, though Moxey continued to run both the recording and publishing sides of the business until early last year. At that point Sony took complete control of the Ultra label and Moxey stood down from his role at the record company.

Ultra Music Publishing was not part of the Sony deal and continues to be run by Moxey. However, in a lawsuit last year, Sony argued that the Ultra label owns the Ultra brand, and that it previously allowed Moxey to use the name for publishing under licence. However, that licence was terminated last year. Therefore, the major said, his continued use of the Ultra brand in the music publishing space constitutes trademark infringement.

But not so says Moxey in a legal response filed with the courts last week which includes a counterclaim. That’s because, he explains, before Sony got involved, Ultra Records LLC (or URL) owned the Ultra mark in the record business, but Ultra International Music Publishing (or UIMP) owned it in the music publishing space.

“This separate ownership is reflected in the fact that when URL registered the mark Ultra [with the US Trademark Office], it only registered that mark for the record business services and not for the music publishing business. This is consistent with the fact that there are a number of other users of the mark Ultra in the music business, including the famous Ultra Music Festival, an annual electronic dance music live event which takes place in Miami”.

In the 2012 agreement with Sony, the new filing goes on, “there was a provision that assured UIMP of the continued use of the mark Ultra and the continued use of websites using the mark Ultra. That provision also provided a process whereby UIMP, while assured of the continued use of the mark Ultra, would give up its ownership of the mark Ultra in return for a licence reflecting that continued use”.

“When Moxey proposed a licence between URL and UIMP as provided for in the agreement, he was required to get Sony Music’s approval”, it adds.

“Despite repeated requests, Sony Music did not respond to the requests for such approval; Sony Music did not approve the licence or even propose different terms. Thus, the exchange of ownership for a perpetual licence was never consummated and UIMP remained the owner of the mark Ultra in the music publishing business”.

“When the remainder of the ownership of URL was sold to Sony Music, the issue was raised again by UIMP and Moxey, but Sony Music refused to even discuss the issue”, the legal filing then claims.

“After the sale of the remainder of URL to Sony Music, URL sent a letter to UIMP where it stated that it was cancelling the ‘licence’ with about three months’ notice; giving UIMP three months to transition its reputation and goodwill to a new mark where UIMP had spent over 20 years developing its reputation and goodwill in the Ultra mark in the publishing arena”.

“UIMP responded that there was no licence to cancel because UIMP – not URL – owned the trademark Ultra in the publishing arena and UIMP did not need a licence from URL to continue to use the mark Ultra. URL waited about a year and brought this action”.

With all that in mind, Ultra Music Publishing would like the court to confirm that it owns the Ultra trademark within music publishing – or, if the court decides Sony does in fact control the mark in both recordings and publishing, that it has a perpetual licence to use the brand in the latter.