Sony’s lawsuit (via Ultra Records LLC) was filed against Moxey’s 18-year-old fully independent publishing company, Ultra International Music Publishing (UIMP), in November 2022.
Following the Ultra Records sale in late 2021 (in which Moxey sold Sony the 50% of the label that the major didn’t already own), Moxey has continued to use the ‘Ultra’ name for his publishing company.
Sony Music’s suit claimed that Moxey’s continued use of UIMP’s brand is illegal, because in March 2022, Sony terminated a licensing agreement (from Ultra Records) that permitted UIMP to use the ‘Ultra’ name.
That licensing agreement, says Sony, dates back to 2012, when Moxey sold the major an initial 50% ownership stake in Ultra Records. However, Sony Music confirmed in its filing that no written agreement “was ever executed between Ultra Records and Ultra International Music Publishing concerning the latter’s use of the ULTRA trademark”.
Yesterday (January 19), Moxey/UIMP filed a counterclaim against Sony Music’s lawsuit in the court of the Southern District of New York, and used this document to directly reply to each of the major’s accusations.
(To read each of Moxey/UIMP’s responses, you can view the full counterclaim through this link.)
In the counterclaim, Moxey’s legal team makes the argument that Ultra International Music Publishing has built its own distinct brand equity – separate to Ultra Records – in the music industry during its 18 years of operation.
“The vast majority of UIMP artists and songwriters are not represented by [Ultra Records],” reads the counterclaim. “In fact, less than 5% of UIMP songs are also represented by [Ultra Records]. Other record companies have more [recordings of UIMP-owned songs], including Universal Music.”
One of the central arguments made by the counterclaim regards Ultra Records LLC’s registered trademark(s) of the ‘Ultra’ brand in the US.
Two trademarks were specifically referenced by Sony Music/Ultra Records in its lawsuit against Moxey/Ultra Publishing. Both are registered with the US Patent and Trademark Office (USPTO), and show Ultra Records’ ownership of the ‘Ultra’ brand name in terms of ‘pre-recorded audio music compact discs’ plus (see below) ‘musical sound recordings’.
Moxey/UIMP’s counterclaim argues that his company’s use of ‘Ultra’ in the music publishing business is distinctly different from the two cited USPTO-certified trademarks owned by Ultra Records.
The counterclaim points to the popular annual Ultra Music Festival as an example of the ongoing use of the ‘Ultra’ brand in music – but outside of recorded music – that is legally sound.
“[Ultra Records] was the owner of the mark Ultra in the record business and UIMP was the owner of the mark Ultra in the music publishing business,” reads the counterclaim. “This separate ownership is reflected in the fact that when URL registered the mark Ultra in the USPTO, 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.”
“when [Ultra Records] registered the mark ‘Ultra’ in the USPTO, it only registered that mark for the record business services and not for the music publishing business… there are a number of other users of the mark Ultra in the music business, including the famous Ultra Music Festival.”
Ultra International Music Publishing counterclaim filed this week
In addition, Moxey/UIMP’s counterclaim argues that the executive – having sold Sony 50% of his Ultra Records company in 2012 – subsequently proposed (to Sony Music) a licensing agreement between Ultra Records and UIMP for the ongoing use of the ‘Ultra’ name at the latter company.
The counterclaim alleges: “Despite repeated requests, [Sony Music Entertainment] did not respond to the requests for such approval; SME did not approve the license or even propose different terms. Thus, the exchange of ownership for a perpetual license was never consummated and UIMP remained the owner of the mark Ultra in the music publishing business.”
It adds: “When the remainder of the ownership of [Ultra Records] was sold to SME, the issue was raised again by UIMP and Moxey, but SME refused to even discuss the issue.”
MBW has contacted Sony Music for comment in reaction to Moxey/Ultra International Music Publishing’s new counterclaim.
Last month, following the filing of Sony Music/Ultra Records’ initial suit against Ultra International Music Publishing, a Sony Music spokesperson said: “Patrick Moxey sold Ultra Records and the Ultra brand to Sony Music Entertainment in exchange for a substantial buyout payment, and now is perpetuating the falsehood that he remains affiliated with his former company by continuing to use the Ultra name in connection with the publishing operations he controls.
“These actions knowingly misrepresent his involvement with Ultra and are in clear violation of the trademark rights SME acquired in a mutually agreed upon transaction.”
Moxey told MBW at the time: “Sony have done nothing but bully me from the day I sold them my record company. Ultra International Music Publishing has been an independent standalone business for over 20 years , which publishes songs co-written with Drake, Post Malone, Ed Sheeran, 21 Savage, Rihanna, Future, Kygo and many more.
“The vast majority of our songs are not on Ultra Records or Sony [Music]. I have made it abundantly clear on numerous occasions in media interviews that Ultra International Music Publishing is completely separate from Ultra Records, and always has been. I have every right to use the name “Ultra” in connection with Ultra International Music Publishing, and won’t be intimidated by a massive global corporation.”Music Business Worldwide