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

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.

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