Canadian 'Fashion Santa' Fight Leads To Copyright vs Trademark Food Fight

from the deck-the-halls dept

It's the holiday season, that time of year when many people shrug off the comforting fullness surrounding the far-superior holiday of Thanksgiving for the stressful gift-bonanza of Christmas. What is billed as a time of peace and happiness too regularly instead is anything but. And it seems that Christmas itself occasionally plays a role in the tumult.

Up in Canada, a Toronto-area shopping mall and a male model are currently battling over who gets to control the rights to "Fashion Santa." Paul Mason played the role of Fashion Santa for the Yorkdale Mall in each of the past two Christmas seasons, donning white hair and a magnificent beard along with designer clothes, taking pictures with shoppers and generally being a fashionable representation of Santa Claus. After he refused to reprise his role this year, Yorkdale hired Adam Martin to fill in for him. Mason says the mall cannot do this, because he has a copyright on "Fashion Santa."

Records published by Industry Canada’s intellectual property office show that a copyright for Fashion Santa was registered to Mason on Dec. 22, 2015, and was in the works no later than September, 2014 — three months before Mason debuted as Fashion Santa at Yorkdale...Intellectual property regulations laid out on Industry Canada’s website say copyright protects works of literature, art, drama or music, and “performer’s performances.”

The problem with this is that Canada, like the United States, limits copyrightablity to expressions, not ideas. That would make any copyright on the public performance of being a "fashion Santa" limited in scope to a creative performance in the role. Mason instead seems to believe that his copyright gives him the sole right to the name and to any kind of performance for any kind of fashionable Santa. The latter just isn't the case, while the former is typically the realm of trademark law as opposed to copyright.

And, when it comes to trademarking "Fashion Santa", it seems the mall got there first.

Government records also show Oxford Properties Group Inc., which manages Yorkdale, filed applications on Dec. 8, 2015 to trademark the words “Fashion Santa,” and “Yorkdale Fashion Santa.” Mason applied for a trademark on “Fashion Santa” less than two weeks later, on Dec. 21, 2015.

At least one lawyer commenting on the dispute seems to think Yorkdale would win if this ends up in court, primarily because trademark law is more applicable.

John Simpson, an intellectual property lawyer who is not connected to the case, said a trademark could be issued to the mall even though Fashion Santa is copyrighted by Mason.

“My money would be with the mall,” he said.

Simpson said that, although a character or costume can be copyrighted, he is surprised a copyright was registered for Fashion Santa.

“A character is more than a name,” he said. “And if it’s just a name then it (should be) a trademark.”

Ultimately, even carving out a trademark space for a Santa Claus character that is only unique in that it wears fashionable clothes seems rather silly. Still, in these trying times, it seems that even Santa Claus is a battleground for intellectual property disputes. 'Tis the season, and all that.

Hide this

Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community.

Techdirt is one of the few remaining truly independent media outlets. We do not have a giant corporation behind us, and we rely heavily on our community to support us, in an age when advertisers are increasingly uninterested in sponsoring small, independent sites — especially a site like ours that is unwilling to pull punches in its reporting and analysis.

While other websites have resorted to paywalls, registration requirements, and increasingly annoying/intrusive advertising, we have always kept Techdirt open and available to anyone. But in order to continue doing so, we need your support. We offer a variety of ways for our readers to support us, from direct donations to special subscriptions and cool merchandise — and every little bit helps. Thank you.

–The Techdirt Team

Filed Under: canada, copyright, fashion santa, toronto, trademark
Companies: yorkdale mall

Reader Comments

Subscribe: RSS

View by: Time | Thread

  1. identicon
    Anonymous Coward, 6 Dec 2016 @ 2:04am

    So basically this male model wants to make sure no one hire him again...

    reply to this | link to this | view in thread ]

  2. identicon
    Annonymouse, 6 Dec 2016 @ 4:52am

    Uhm just to add a little correction here but according to local news at the time the mall went and hired someone else for the role which kind of upset the gentleman who created the concept in the first place.
    Kinda changes the gist of the story and who is being a .... MBA

    So to correct the previous statement - The mall administration wants to make sure no one hires an older male model again.

    reply to this | link to this | view in thread ]

  3. icon
    Dark Helmet (profile), 6 Dec 2016 @ 6:28am


    According to the linked article, it appears the concept of a "fashion santa" was already in the works at the mall when the model approached them. They only hired someone else when the original model refused to cease claiming he was the only one who had any rights to the "character".

    reply to this | link to this | view in thread ]

Add Your Comment

Have a Techdirt Account? Sign in now. Want one? Register here

Subscribe to the Techdirt Daily newsletter

Comment Options:

  • Use markdown. Use plain text.
  • Make this the First Word or Last Word. No thanks. (get credits or sign in to see balance)    
  • Remember name/email/url (set a cookie)


Add A Reply

Have a Techdirt Account? Sign in now. Want one? Register here

Subscribe to the Techdirt Daily newsletter

Comment Options:

  • Use markdown. Use plain text.
  • Make this the First Word or Last Word. No thanks. (get credits or sign in to see balance)    
  • Remember name/email/url (set a cookie)

Follow Techdirt
Insider Shop - Show Your Support!

Essential Reading
Techdirt Deals
Report this ad  |  Hide Techdirt ads
Techdirt Insider Chat
Recent Stories

This site, like most other sites on the web, uses cookies. For more information, see our privacy policy. Got it

Email This

This feature is only available to registered users. Register or sign in to use it.