Ultra Music Publishing will have to change its name after losing a trademark legal battle with Sony Music, which owns the Ultra trademark as owner of the Ultra Records label - previously a sister company to Ultra Music Publishing.
Despite having fiercely fought back against Sony’s trademark claims in court, Ultra Music Publishing boss - and original founder of the Ultra label - Patrick Moxey has played down the significance of the judgement.
In a statement issued after the court made its ruling, Moxey lists out the successes of various Ultra Music Publishing-signed songwriters at this year’s Grammy Awards, before stating, “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”, adding “nothing changes except the name”.
Moxey was a business partner of Sony for a decade after it bought a stake in his label Ultra Records in 2012. The major then took complete ownership of the label business in 2022. Ultra Records’ sister company, Ultra Music Publishing - the focus of the trademark battle - was never part of the Sony deal and continues to be run by Moxey, despite him now having no ownership or involvement in Ultra Records.
After Sony and Moxey parted company, the major argued that it had acquired the Ultra trademark as part of its deal in 2012, and that since then Ultra Music Publishing had only been using the name under licence. Sony then terminated that licence and subsequently accused Moxey and Ultra Music Publishing of trademark infringement after the company continued to use the Ultra brand.
Moxey’s argument was that although the contract he signed with Sony in 2012 did talk about the Ultra trademark, and made reference to the publishing company continuing to use the brand under licence, the agreement also said that a separate proper licensing agreement would be put in place at a later date.
That separate agreement was never concluded. As a result, claimed Moxey, his publishing company retained the rights to use the Ultra brand for music publishing, while Sony had the rights to the trademark relating only to its recordings business. However, the court rejected those arguments.
When the case got to trial last year, Moxey also said that Sony Music’s then top dog Doug Morris had told him before the 2012 deal was signed that the publishing company would be “untouched” by the label transaction. That guarantee, he added, was a crucial factor in him deciding to do the label deal.
In his judgement, judge Arun Subramanian was not only unswayed by these arguments, but outright skeptical, writing that “the court has serious doubts about Moxey’s credibility on this point”.
There was no evidence that Morris had made that guarantee to Moxey, he added, and the term in the 2012 contract regarding the Ultra trademark clearly set out Sony’s position regarding the publishing company’s continued use of the brand.
While it was the judge who considered and rejected the arguments put forward by Moxey, Sony’s core claims of trademark infringement were reviewed by a jury.
They concluded last year that Ultra Records owned the Ultra trademark, that it had licensed its use to Ultra Music Publishing from 2012 to 2022, that that licence had been terminated in 2022, and therefore “Publishing’s use of the mark after March 2022 was in breach of the licence and, for unfair-competition purposes, in bad faith”.
The jury also found that Ultra Publishing’s use of the Ultra name was ‘diluting’ the label’s trademark, which basically means it is weakening the “distinctive quality” of the mark. However, they also ruled that Ultra Publishing using the Ultra name was not “causing confusion” and that Ultra Recordings had “suffered no damage” from this “breach of the licence”.
That last point was important because, although - based on the jury’s decision - Subramanian issued an injunction ordering Ultra Music Publishing to change its name, Sony was not awarded damages as a result of the infringement of its trademark.
The court injunction forces Ultra International Music Publishing and all of its employees and associates to stop using the term Ultra altogether, stating that the company is “hereby permanently enjoined and restrained from using, in connection with the offer for sale, sale, distribution, marketing, advertising and/or promotion of any music publishing or music-related goods or services the term ‘Ultra’”.
The publisher has 180 days to comply. While it can continue to use the domain name ultrapublishing.com for another year, it must forward to another domain within 180 days.
The trademark battle is not the only litigation involving Sony Music and Ultra Music Publishing. The publisher also filed a lawsuit against Sony and Ultra Records accusing the two companies of copyright infringement. Sony recently called for that lawsuit to be dismissed claiming that the legal action was nothing more than a retaliatory strike over its trademark action.