When it comes to music festivals, becoming a brand name is paramount to long-term success. Consider the dozens taking place concurrently during the spring and summer months. Unless you’re a Coachella or Lollapalooza, building brand equity over decades years of shows — so that ticket-buyers don’t even necessarily need to know the lineup before committing their hard-earned dollars — how do you stand out from the crowd?
The name Ultra, for instance, is synonymous with dance music — the annual festival takes place this weekend in Miami and is expected to draw upwards of 160,000 people. Founded in 1999, and named after the Depeche Mode album “Ultra,” it’s not the only dance music entity using the name, however, which has resulted in confusion in the music space and a tangled legal web for entrepreneur Patrick Moxey.
A veteran of the dance music scene, Moxey founded Ultra Records in 1995, building a roster that included the likes of Steve Aoki, Sofi Tukker and Benny Bennassi. Over 25 years, the label achieved gold and platinum certifications for many releases and earned multiple Grammys. It was so successful that, in 2012, Sony Music Entertainment (SME) acquired 50% of Ultra, which Moxey continued to run. Almost a decade later at the end of 2021, the major purchased the remaining shares of the company, and Moxey exited the label he launched, striking a new deal with Warner.
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Clearly knowing how to cultivate hits, back in 2004, Moxey set up Ultra International Music Publishing (UIMP) as a home for writers and topliners. An entirely separate entity from Ultra Records, UIMP is wholly owned by Moxey, with Warner Chappell acting as its sub-publisher in the U.K. And this is where things get complicated.
A year after the full acquisition of Ultra Records, SME filed a lawsuit against Moxey and UIMP claiming that upon the completion of this transaction, the prior licensing agreement that was in place allowing Moxey to use of the name “Ultra” in connection with his publishing company was effectively terminated. This makes Moxey’s continued use of the name “Ultra” a violation of the label’s trademark, which interferes with the trust consumers and business have in the brand.
The second battle of the Ultras kicked off one month later when Moxey filed a countersuit against SME which denies the existence of the licensing agreement which SME cited. It states that UIMP has the trademark for the name “Ultra” in music publishing, and that over the course of its 18-plus years of operation, and that UIMP has forged its own brand identity distinct from that of Ultra Records.
Complicating matters even more, Moxey, via UIMP, asserts that while the name “Ultra” is associated with electronic dance music on the record label side of the industry, on the publishing side, UIMP’s reach goes far beyond that one genre. To further illustrate the two distinct entities, less than 5% of the artist-writers signed to UIMP are signed as artists to Ultra Records.
This is not the first time Moxey has had issues with the name “Ultra.” In 1999, he took on the upstart music festival and its creator Russell Faibisch. Initially, there was an agreement in place between Moxey and Faibisch that as long as the festival remained in Miami, they could use the name Ultra. Except Ultra Music Festival, or UMF, became one of the biggest festivals in the world with events across the globe. In 2012, the same year SME acquired 50% of Ultra Records, Moxey filed his own trademark lawsuit against Ultra Music Festival stating they breached the location-specific use of the name. The festival, in turn, countersued claiming that as UMF they were not in violation. Additionally, Ultra Records had attempted to rebrand as Ultra Music, which the festival claimed was infringement on its trademark.
It’s enough to make to your head spin at 120 bpms.
Darren Traub was one of the attorneys of record for Ultra Music Festival at the time of these dueling suits. Even though the case was looking favorable for UMF, Traub recommended that they settle. “The jury’s only going to tell you that what you did up ‘til now was fine,” Traub explains. “The minute you change something, you’re going to get sued again. What you want is a rulebook. The only way to do that is to settle, then work out a way to co-exist. The two parties ended up settling and eventually joined forces.”
This “global alliance” between the two electronic music behemoths has been in place for over a decade. Moxey points to the amicable relationship as a template for how things can move forward with Ultra Records and UIMP.
When you pick a generic and casual term like “Ultra” for your company, a term that is used as a superlative, an amplifier, one that has as much trademark value as “awesome” or “super,” these conflicts are never going to end.
Trademarks have a hierarchy. The strongest is a coined mark where the word doesn’t exist in any language, such as “Kodak.” The next level down is arbitrary, such as “Apple,” where the word exists, but it doesn’t have anything to do with the product, in this case, technology. Then there is suggestive, where the mark explains what the product is, like “Weed Eater.”
Further down is a descriptive mark. Laudatory marks like “Ultra” fall under this category. Expert trademark attorney Nathan Belzer explains, “You can build up rights to a mark that is laudatory or descriptive. It is protectable, but your scope of protection is going to be narrower.”
In the case of the Ultras, Belzer, who has read both cases, opines: “The marks are identical to some extent. What is critical is, the smaller differences in the mark are the associated goods and services: music festival versus music publishing versus music recordings. Those smaller differences in those goods and services can make a difference when the mark is weak, and consumers are already used to differentiating between Ultra marks in the music world. That’s Moxey’s argument. The flip side is, the distinction between the performance of music and the creation of music is a very thin line. That’s Sony’s argument.”
Beyond the confusion of various “Ultras” in the music space, SME asserts that there was a licensing agreement in place which was terminated upon the 100% acquisition. If there was an explicitly written licensing agreement — which is unclear — the litigation would not be happening.
This is not to say that a licensing agreement cannot be given orally or by conduct, but those types of non-written agreements don’t help SME’s case. Connected to that is, the trademark owner or licensor has to exercise quality control over the licensee. When Moxey was running both Ultra Records and UIMP, this quality control was implicitly in place, which the SME suit acknowledges. What that suit is trying to work its way around is that it was a “naked license,” which is one where there is a chance you could lose your rights to enforce your trademark.
“If I’m Sony’s lawyers, I would certainly be crafting my argument to say that it is a pretty clear indication that UIMP was acknowledging that it was Ultra Records right to give them first place,” says Belzer. “If I’m Moxey, I would say that doesn’t rise to the level of a licensing agreement. Acknowledging that I can continue to use a mark I already have the right to use is just that, an acknowledgment that I already had rights and can continue to use it. That we never entered into a formal license agreement is evidence that there was no need for one because I already had the right to use it.”
The takeaway here — for both sides, is, put your licensing agreements in writing. And don’t brand your company with a common word like “Ultra.”
