Patrick Moxey’s independent publishing company, Ultra International Music Publishing (UIMP), will have to change its name on orders from a US federal court.
In an order issued on Tuesday (February 25) and obtained by MBW, Judge Arun Subramanian of the US District Court for the Southern District of New York gave UIMP 180 days (approximately six months) to change its name to something other than “Ultra.”
He gave the company the right to refer to itself as “formerly known as Ultra International Music Publishing” on social media for 18 months following the order.
The order followed a jury verdict in December, which found that Moxey’s music publishing company had breached the trademark owned by Ultra Records, the EDM-focused record label that Moxey had sold to Sony Music Entertainment in 2021.
“[Moxey’s company] has been clinging to the Ultra name even though it forcefully argued throughout this case that the name had nothing to do with the success of its business.”
Judge Arun Subramanian
Judge Subramanian’s order made clear that “the public interest weighs in favor of a permanent injunction” on the matter. He noted that Moxey’s firm had “made no representation that it will cease using the mark absent an injunction” and had “fought tooth and nail to avoid dropping the Ultra name”.
The judge further commented that Moxey’s company has been “clinging to the Ultra name even though it forcefully argued throughout this case that the name had nothing to do with the success of its business”.
However, Judge Subramanian rejected Sony’s request for UIMP to hand over its profits from March 2022 onwards, when Sony ended its agreement to license the Ultra name to Moxey.
Quoting legal precedent, the judge wrote that “such relief is rarely granted and [is] limited to situations in which the defendant’s profits represent unjust enrichment derived from diversion of business that clearly would otherwise have gone to the plaintiff.”
That didn’t happen in this case, as Moxey’s publishing company had used the “Ultra” name for years before he sold Ultra Records to Sony, and Ultra Records’ recording business wasn’t impacted by UIMP’s publishing activities, the judge concluded.
In their verdict, the jury found that UIMP’s use of the “Ultra” name is likely to dilute the value of Sony/Ultra Records’ trademark, but is not likely to cause confusion among UIMP’s customers, and that UIMP’s use of the name caused no damages to Sony/Ultra Records. They did not award damages.
“Our roster of talented writers and producers, alongside our executive team will keep doing what they do best—delivering the exceptional work that has made us who we are. Nothing changes except the name.”
Patrick Moxey
In a statement sent to MBW following the judge’s order, Moxey said: “Independent music companies are always facing challenges from major corporations, who are threatened more than ever by their increasing success.
“With 13 songwriters nominated across seven categories at this year’s Grammys, and their participation in winning Album of the Year, R&B Album of the Year, and Rap Album of the Year, we are proud of the many successes of the songwriters we represent.
“Our roster of talented writers and producers, alongside our executive team will keep doing what they do best—delivering the exceptional work that has made us who we are. Nothing changes except the name.”
The dispute between Sony and Moxey began in 2012, when Moxey sold a 50% stake in his record label Ultra Records to Sony. He retained full ownership of Ultra Records’ sister company, Ultra International Music Publishing.
The issue of whether or not Moxey could continue using the “Ultra” name for his publishing was never resolved. The two companies came to an agreement allowing Moxey to continue using the “Ultra” name, but that was not written into the contract between Sony and Moxey over Ultra Records. That contract only stipulated that both parties were required to enter “good faith” negotiations to come to an agreement.
According to Judge Subramanian’s statement of facts, Moxey sent Sony a proposal that would have allowed him to use the “Ultra” name for his publishing company in perpetuity, which Sony rejected. Neither side took any further steps to clarify the situation.
“The parties’ 2012 agreement, which even Sony’s general counsel agreed wasn’t a model of clarity, kicked the can down the road on [UIMP’s] rights,” the judge wrote.
“Negotiations about Moxey’s buyout lasted six months. You’d think that somewhere in that half year, the issue of the [trademark] license would finally have been resolved. It wasn’t.”
In the years that followed, the relationship between Sony and Moxey “soured,” in the judge’s words, and in late 2021, Sony bought Moxey’s remaining stake in Ultra Records. Soon thereafter, Sony’s Ultra Records notified Moxey that it was ending its trademark license to UIMP. Moxey rejected the claim and continued to use the Ultra name.
Ultra Records sued UIMP in late 2022, alleging trademark infringement. In 2023, Moxey filed a counterclaim arguing, among other things, that using the Ultra name for music publishing didn’t affect Sony’s use of the name for a record label.
As an example, Moxey’s lawyers pointed to the Ultra Music Festival, which takes place every year in Miami, as evidence that the Ultra name can be used in various parts of the music business without interfering in other activities. They also noted that Ultra Records’ trademark, filed with the US Patent Office, specified that it was for use in the music recording business, and not music publishing.
The case is separate from another one pitting Moxey’s publishing company against Ultra Records.
Last December, UIMP filed a copyright infringement lawsuit against Sony Music Entertainment and a number of its subsidiaries, including Ultra Records and AWAL. UIMP alleged that Sony and its subsidiaries were using compositions owned by the company without a license.
The legal complaint said that UIMP had carried out an audit of Sony, which found “underpayment and non-payment of royalties” to Moxey’s publishing companies, and that even though Sony “admitted the audit uncovered credit errors and miscalculations of payments,” it nonetheless “refused to pay the [UIMP] plaintiffs and their songwriters the monies that the audit revealed they are owed.”
Due to the alleged refusal to pay, UIMP said in its complaint that it “no longer grants licenses” to Sony and its subsidiaries.
Earlier this month, Sony filed a motion to dismiss the case. The company’s lawyers called the copyright suit “an ill-conceived effort” to “retaliate against” Sony for the trademark infringement lawsuit.
Sony’s lawyers asserted that UIMP filed the copyright suit “on the eve of [the jury] trial in the trademark lawsuit” as a way to gain leverage against Sony and force the company into settling the trademark claim.
They said the claims made by UIMP were “settled in principle years ago for a small fraction of the amount claimed, and [UIMP] never pursued those audit claims any further.”
Judge Ronnie Abrams of the US District Court for the Southern District of New York has yet to rule on Sony’s motion to dismiss.Music Business Worldwide
