Business News Labels and Publishers Legal
Chris Cook Published on Monday 23 January 2023
Ultra Music Publishing has officially responded to a lawsuit filed last year by Sony Music, the current sole owner of the Ultra Records label.
Both the publisher and label were founded by Patrick Moxey and initially operated as sister companies. Sony first acquired the label in 2012, but Moxy remained in both the recording and publishing business until early last year. At that point, Sony Ultra took full control of his label, and Moxie resigned from her role with the record company.
Ultra Music Publishing is not part of the Sony deal and continues to be operated by Moxey. But in a lawsuit last year, Sony alleged that the Ultra label owned his Ultra brand and that he had previously allowed Moxey to use the name to publish under license. bottom. However, that license expired last year. Accordingly, Major said his continued use of his Ultra brand in the music publishing sector constitutes trademark infringement.
But in a legal response filed in court last week, including a counterclaim, Moxie said otherwise. The reason is that before Sony got involved, Ultra Records LLC (or URL) owned the Ultra mark in the record business, but Ultra International Music Publishing (or UIMP) owned it in the music publishing field. He explains that it was because he was
“This separate ownership is reflected in the fact that URL has registered the Ultra trademark. [with the US Trademark Office], it registered its mark only for the record business service, not the music publishing business. This is consistent with the fact that there are many other users of Ultra Mark in the music industry, such as the famous Ultra Music Festival, an annual live electronic dance music event in Miami. “
In its 2012 deal with Sony, the new application continues: This clause also provided a process for UIMP to relinquish ownership of Mark Ultra in exchange for a license reflecting its continued use while ensuring continued use of Mark Ultra. “
“When Moxey proposed a license between URL and UIMP as stipulated in the contract, he had to get Sony Music’s approval,” it adds.
“Despite repeated requests, Sony Music has not complied with requests for such approval. Sony Music has not approved the license or even proposed alternative terms. The exchange of ownership was never completed and UIMP remained the owner of the Ultra mark in the music publishing business.”
“When the remaining ownership of the URL was sold to Sony Music, the issue was raised again by UIMP and Moxey, but Sony Music refused to even discuss the matter,” the legal document claims. doing.
“After selling the remaining URLs to Sony Music, URLs wrote to UIMP stating that they would revoke their ‘license’ with approximately three months’ notice. He gave UIMP three months to transfer its reputation and credit to the new mark. UIMP has spent over 20 years building his reputation and credibility with Ultramark in the publishing industry. “
“UIMP replied that there was no license to cancel because UIMP, not URL, owned Ultra’s trademark in the publishing field and UIMP did not need to obtain a license from URL for continuing to use Ultra’s trademark. URL waited about a year to bring this action.
With all of this in mind, Ultra Music Publishing would like the court to confirm that it owns the Ultra trademarks in music publishing. Or, if a court finds that Sony does in fact control the Ultra trademark in both recording and publication, you’ll need to make sure you have a perpetual license. Use the brand in the latter.