The independent publishing company Patrick Moxey, Ultra International Music Publishing (UIMP), will have to change its name by order from the US Federal Court.
In the order published on Tuesday (February 25) and received by MBW, judge Arun Subramanyan from the US District Court for the Southern District of New York gave UIMP 180 days (approximately six months) to change its name to something else, except the word “Ultra”.
He allowed the company to refer to itself as “previously known as Ultra International Music Publishing” on social networks within 18 months after the order.
The order followed a jury verdict in December, which indicated that Moxey’s music publishing company violated the trademark belonging to Ultra Records, an EDM-oriented label that Moxey sold to Sony Music Entertainment in 2021.
“(Moxey) clings to the Ultra name, although throughout this case he forcibly argued that the name has nothing to do with the success of his business.”
Judge Arun Subramanyan
Judge Subramanyan made it clear that “public interest weighs in favor of a permanent judicial prohibition” on this issue. He noted that Moxey “did not state that he would stop using the name absent a court ban” and “fought tooth and nail to retain the Ultra name.”
The judge further commented that Moxey “clings to the Ultra name, even though he argued that it had no relation to the success of his business.”
Legal Developments and Implications
However, Judge Subramanyan denied UIMP’s request to transfer its profits from March 2022, when Sony terminated its agreement on Ultra with Moxey.
Quoting legal precedents, the judge wrote that “such relief is rarely granted and is limited to situations where the defendant’s profits constitute unjust enrichment that arises from business sabotage, which would clearly benefit the plaintiff otherwise.”
This was not applicable in this case, as Moxey had used the Ultra name for several years before selling Ultra Records to Sony, and UIMP’s publishing activities did not negatively affect Ultra Records, the judge concluded.
The full order from the judge can be read here.
In their verdict, the jury found that UIMP‘s use of the Ultra name would likely weaken the value of the Sony/Ultra Records brand, but was unlikely to confuse UIMP’s customers, and they did not award damages.
Photo: Margarita Bushin
“Our team of talented writers and producers, along with our executive team, will continue doing what we do best – presenting exclusive works that have brought us to where we are. Nothing changes except the name.”
Patrick Moxey
In a statement sent to MBW following the judge’s order, Moxey remarked: “Independent music companies constantly face challenges from larger corporations, especially when they are experiencing success.”
“With 13 songwriters nominated in seven categories this year for the Grammys, including participation in winning albums for Album of the Year, R&B Album of the Year, and Rap Album of the Year, we take pride in the numerous successes of the songs we represent.”
“Our team of talented writers and producers, guided by our executive team, will keep doing what we do best – offering exclusive work that defines who we are. Nothing changes except the name.”
The dispute between Sony and Moxey began in 2012 when Moxey sold 50% of his sound recording label, Ultra Records, to Sony. He retained full ownership of the subsidiary, Ultra International Music Publishing.
The question of Moxey’s ability to continue using the “Ultra” name for his publishing company has remained unresolved. Both parties had come to an agreement allowing Moxey to continue using the name “Ultra,” although this was not documented in the contract between Sony and Moxey regarding Ultra Records. This agreement only provided that both parties would engage in negotiations “in good faith” to reach a consensus.
According to Judge Subramanyan’s findings, Moxey submitted a proposal to Sony to use the Ultra name for his publishing company indefinitely, which Sony rejected. Neither party took any further steps to clarify the situation.
“The agreement of the parties in 2012, even if endorsed by Sony, failed to provide clarity regarding future rights for the UIMP,” the judge noted.
“The negotiations over licensing lasted six months. One would expect that within that timeframe, the licensing issue would have been resolved. That was not the case.”
In subsequent years, the relationship between Sony and Moxey “deteriorated,” according to the judge, and at the end of 2021, Sony acquired the remaining share of Moxey’s stake in Ultra Records. Shortly thereafter, Ultra Records notified Moxey that they were terminating the licensing agreement for the UIMP trademark. Moxey contested the claim and continued to use the Ultra name.
Ultra Records filed a lawsuit against UIMP at the end of 2022, asserting trademark violations. In 2023, Moxey filed a counterclaim, arguing that the use of the Ultra name in music publishing did not impact the use of the Sony name for the label.
For example, Moxey’s attorneys highlighted the Ultra Music Festival, held annually in Miami, as evidence that the Ultra name can be used across different sectors of the music industry without interfering with one another. They also pointed out that the trademark for Ultra Records, filed with the US Patent Office, indicated its use specifically in the record business and not in music publishing.
The case is separate from another lawsuit involving Moxey’s Publishing Company against Ultra Records.
In December of last year, UIMP filed a copyright lawsuit against Sony Music Entertainment and several of its subsidiaries, including Ultra Records and Aval. The UIMP claimed that Sony and its subsidiaries used compositions owned by the company without proper licensing.
The legal complaint stated that UIMP conducted an audit of Sony, which revealed “underpayments and non-payments of royalties” owed to Moxey’s publishers, and that even though Sony “acknowledged that the audit revealed discrepancies and omissions,” it nevertheless “refused to pay UIMP, its writers, and their songs.”
In light of the alleged refusal to pay, UIMP asserted in its complaint that it no longer grants licenses to Sony and its subsidiaries.
Earlier this month, Sony submitted a request for dismissal of the case. The company’s lawyers termed the copyright lawsuit “ill-conceived efforts” to “retaliate” against Sony for the trademark claim.
Sony’s legal team contended that UIMP’s copyright lawsuit “was filed on the eve of the jury trial” as a tactic to leverage against Sony and force a resolution on the trademark demands.
They claimed that the issues raised by UIMP “had essentially been settled years ago for a minor portion of the claimed amount, and UIMP never pursued these claims further.”
Judge Ronnie Abrams of the US District Court in the Southern District of New York has yet to rule on Sony’s dismissal request.
Lucas focuses on the interaction between music and society. He specializes in how music influences and reflects cultures, analyzing the role of sound in social, political, and cultural events around the world.
