Publishing Company Ordered to Change Its Name
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 December, an order was given, which established that the music company Moxey Music Publishing violated the goods belonging to Ultra Records, a label oriented to EDM, which Moxey sold Sony Music Entertainment in 2021.
Court Order Details
In the order published on Tuesday (February 25), and received by MBW, Judge Arun Subramanyan of the US District Court for the Southern District of New York gave UIMP 180 days to change its name to anything that does not include the “ultra”.
He granted the company the right to refer to itself as “previously known as Ultra International Music Publishing” on social networks within 18 months after the order.
Nevertheless, Judge Subramanyan rejected Sony’s request for UIMP to transfer its profit from March 2022, when Sony terminated its agreement on the ultra-name Moxey.
By quoting a legal precedent, the judge wrote that “such relief is rarely provided and is limited to situations in which the defendant’s profit is an unfair enrichment occurring from business sabotage, which otherwise would clearly go to the plaintiff.”
In this case, this did not happen, as Moxey had used the name Ultra for many years before selling Ultra Records to Sony, and the Ultra Records business did not affect UIMP’s publishing activities, the judge concluded. The order of the judge can be read in full here.
In their verdict, the jury found that the use of UIMP “Ultra” in the name would probably weaken the value of the Sony/Ultra Records trademark, but it is unlikely to cause confusion among UIMP customers, and that the use of the UIMP name has not caused damage to Sony/Ultra Records. They did not award any damages.
Statement from Moxey
In a statement sent to MBW following the order of the judge, Moxey said: “Independent music companies always face problems from large corporations, which pose more threats as we achieve greater success.”
“With 13 songwriters nominated in seven categories this year at the Grammys, and their participation in the 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 songs we present.”
“Our composition of talented writers and producers, along with our executive team, will continue to do what we do best – to showcase exclusive work that defines us. 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 whether Moxey can continue to use the name “Ultra” for its publishing company has never been definitively resolved. Both companies had an agreement allowing Moxey to continue using the name “Ultra”, but this was not explicitly written in the contract between Sony and Moxey regarding Ultra Records. The agreement only stipulated that both parties had to enter into negotiations “in good faith” to come to an agreement.
According to Judge Subramanyan regarding the facts, Moxey sent Sony a proposal that would allow him to use the Ultra name for his publishing company indefinitely, which Sony rejected. Neither party took further steps to clarify the situation.
“The parties’ agreement in 2012, which was even accepted by Sony, was not a model of clarity concerning the future rights (UIMP),” the judge wrote.
“The negotiations for Moxey’s redemption lasted six months. One might think that somewhere during these six months, the licensing issue would have finally been resolved. It was not.”
In subsequent years, the relationship between Sony and Moxey “deteriorated,” according to the judge, and at the end of 2021, Sony bought Moxey’s remaining share in Ultra Records. Shortly after, Ultra Records notified Moxey that it was terminating his license for the UIMP trademark. Moxey rejected the claim and continued to use the Ultra name.
Ultra Records filed a lawsuit against UIMP at the end of 2022, alleging trademark violations. In 2023, Moxey filed a counterclaim, asserting that the use of the Ultra name for music publishing did not affect Sony’s use of the name for the label.
For example, Moxey’s lawyers pointed to Ultra Music Festival, which is held every year in Miami, as evidence that the name Ultra can be used in various sectors of the music business without interfering with other activities. They also noted that the Ultra Records trademark, filed with the US Patent Office, indicated that it is for use in the music recording business, not in music publishing.
The case is separate from another Moxey publishing company against Ultra Records.
In December last year, UIMP filed a copyright lawsuit against Sony Music Entertainment and a number of its subsidiaries, including Ultra Records and Aval. The UIMP alleged that Sony and its subsidiaries used compositions owned by UIMP without a license.
The legal complaint states that UIMP conducted an audit of Sony, which found “underpayment and non-payment of royalties” to Moxey’s publishers, and that, although Sony “admitted that the audit revealed credit errors and discrepancies,” it nevertheless “refused to pay (UIMP), its authors, and their songs.”
In light of the alleged refusal to pay, UIMP stated in her complaint that it “no longer grants a license to” Sony and its subsidiaries.
Earlier this month, Sony filed a motion to dismiss the case. The company’s lawyers called the copyright lawsuit “ill-conceived efforts” to “respond” to Sony regarding the trademark claim.
Sony’s lawyers asserted that UIMP’s copyright lawsuit “was filed right before the jury trial” in the trademark claim as a tactic to gain leverage against Sony and force the company to settle the trademark demands.
They argued that the claims put forth by UIMP had been effectively settled many years ago for a fraction of the claimed amount, and that UIMP never pursued these claims from the audit further.
Judge Ronnie Abrams of the US District Court in the Southern District of New York has not yet made a decision regarding Sony’s motion to dismiss.
