When it comes to music festivals, becoming a well-known brand is paramount to long-term success. Think of dozens happening at the same time during the spring and summer months. Unless you’re Coachella or Lollapalooza, building brand equity over decades of running shows – so ticket buyers don’t even need to know the line-up before putting in their hard-earned dollars – how do you stand out from the crowd?

The name Ultra, for example, is synonymous with dance music – the annual festival takes place this weekend in Miami and is expected to draw over 160,000 people. Founded in 1999 and named after Depeche Mode’s “Ultra” album, it’s not the only dance music organization to use the name, however it has created confusion in the music space and a confusing legal web for entrepreneur Patrick Moxey.

A veteran of the dance music scene, Moxxi founded Ultra Records in 1995, building a roster that included the likes of Steve Aoki, Sophie Tucker and Benny Bennassi. Over the course of 25 years, the label has been certified gold and platinum for many releases and won several Grammy Awards. It was so successful that in 2012 Sony Music Entertainment (SME) acquired 50% of Ultra, which Moxxi continued to manage. Nearly a decade later, at the end of 2021, the major bought out the remaining shares of the company, and Moxxi left the label he founded in a new deal with Warner.

Clearly knowing how to create hits, Moxxi founded Ultra International Music Publishing (UIMP) in 2004 as a home for writers and top liners. A completely separate entity from Ultra Records, UIMP is wholly owned by Moxy, with Warner Chappell serving as its sub-publisher in the UK. And this is where things get more complicated.

A year after the full acquisition of Ultra Records, SME filed a lawsuit. lawsuit v. Moxxi and UIMP, arguing that following the completion of this transaction, the previous licensing agreement allowing Moxxi to use the name “Ultra” in connection with his publishing company was effectively terminated. This makes Moxxi’s continued use of the name “Ultra” an infringement of the label’s trademark, undermining consumer and business confidence in the brand.

The second ultras battle began a month later when Moxxi applied. counterclaim against SME, which denies the existence of the license agreement referred to by SME. It states that UIMP has a trademark for the name “Ultra” in music. publishingand that over the course of 18+ years of operation, and that UIMP has created its own brand, separate from the Ultra Records brand.

To complicate matters further, Moxxi, through UIMP, claims that while the name “Ultra” is associated with electronic dance music on the part of the record companies, on the part of the publishers, UIMP goes far beyond that one genre. To further illustrate the two different entities, less than 5% of artist-writers signed to UIMP are signed as artists to Ultra Records.

This isn’t the first time Moxxi has had trouble with the Ultra name. IN 1999, he took on music festival upstart and creator Russell Faibish. Initially, an agreement was made between Moxxi and Faibish that as long as the festival remained in Miami, they could use the Ultra name. In addition, Ultra Music Festival, or UMF, has become one of the largest festivals in the world with events all over the world. In 2012, the same year that SME acquired 50% of Ultra Records, Moxxi filed his own trademark lawsuit against Ultra Music Festival, claiming they had infringed on the use of the name based on location. The festival, in turn, filed a countersuit, claiming that as UMF they did not violate the rules. In addition, Ultra Records attempted to rebrand as Ultra Music, which the festival claims is an infringement of its trademark.

This is enough to make your head spin at a speed of 120 beats per minute.

Darren Traub was one of record lawyers for Ultra Music Festival during these duel costumes. Even though the deal looked favorable to the UMF, Traub recommended that they settle the matter. “The jury will only tell you that what you’ve been doing so far has been fine,” Traub explains. “The minute you change something, you will be sued again. You need a rulebook. The only way to do this is to negotiate and then find a way to coexist. [Ultra Records and Ultra Music Festival] also agreed that they would try to protect each other’s trademarks elsewhere.”

This “global alliance” between the two giants of electronic music has existed for more than a decade. Moxxi points to friendships as a template for how things can move forward with Ultra Records and UIMP.

When you choose a generic and random term such as “Ultra” for your company, a term that is used in superlatives, like an amplifier that has the same brand value as “amazing” or “super”, these conflicts will never disappear. end.

Trademarks are hierarchical. The strongest is a made-up sign that doesn’t have a word in any language, such as “Kodak”. The next level down is arbitrary, like “Apple”, where the word exists but has nothing to do with the product, in this case the technology. Then there are the suggestive ones where the sign explains what the product is, such as “Weed Eater”.

Below is a descriptive sign. Laudatory ratings like “Ultra” fall under this category. Trademark Expert Nathan Belzer explains: “You can create rights to a mark that is laudatory or descriptive. It can be protected, but your sphere of protection will be narrower.”

In the case of ultras, Belzer, who has read both cases, believes: “The marks are somewhat identical. What is important is that smaller brand differences are associated with related products and services: a music festival versus a music publication versus a music recording. These small differences in these products and services can make a difference when the sign is weak and consumers are already accustomed to distinguishing Ultra signs in the music world. This is Moxie’s argument. On the other hand, the difference between playing music and creating it is very subtle. This is Sony’s argument.”

In addition to the confusion with various “Ultra” in the music space, SME claims that there was a licensing agreement that was terminated after the acquisition of 100% of the shares. If there was an explicitly written license agreement – which is unclear – there would be no litigation.

This does not mean that a license agreement cannot be entered into orally or through conduct, but these types of unwritten agreements do not help the SME business. As such, the trademark owner or licensor must exercise quality control over the licensee. When Moxxi ran both Ultra Records and UIMP, this quality control was implicitly in place, which SME’s claim acknowledges. What this lawsuit is trying to get around is that it was a “bare license”, i.e. one in which there is a chance that you could lose your rights to protect your trademark.

“If I were Sony’s lawyer, I would certainly put forward my argument to say that this is a pretty clear indication that UIMP recognizes Ultra Records’ right to give them the number one spot,” says Belzer. “If I were Moxie, I would say that this does not rise to the level of a license agreement. Recognizing that I can continue to use a trademark that I already have the right to use is simply recognizing that I already have the rights and can continue to use it. The fact that we never entered into a formal license agreement indicates that there was no need for it, because I already had the right to use it.

The takeaway here is for both parties, get your license agreements in writing. And don’t label your company with a generic word like “Ultra.”