Michael Ford
Intellectual Property

Bet on the mall getting Fashion Santa trademark: Simpson

If a battle between the man who played Fashion Santa and the mall where he worked as the styling elf goes before the courts, a trademark would likely be issued to the shopping centre — even though the model copyrighted the name, Toronto intellectual property lawyer John Simpson tells the Toronto Star

“My money would be with the mall,” Simpson, principal of Shift Law, tells the newspaper in a story about the erupting controversy between Paul Mason, a model, and Yorkdale Shopping Centre where he played Fashion Santa for the past two holiday seasons.

The tempest became public after the mall hired a new model, Adam Martin, to play Fashion Santa for this season, says the Star article.

“I am the rightful owner of Fashion Santa. I created it,” Mason told told CTV’s Your Morning. “It’s my pitch and I’m here to defend it.”

But Yorkdale marketing director Lucia Connor told the Star the mall made several attempts to reach Mason over the summer to no avail and hired Martin as a result.

Mason disputes the mall’s version of events telling the newspaper, “I’m standing by my brand and the rights of ownership and the intellectual property of a character I created … There’s no way in hell I would have given up ownership.”

In fact, he told the Star that he decided not to return to Yorkdale due to “conditions” on his employment and a sticking point over ownership of the Fashion Santa brand.

The Star reports a copyright was registered to Mason for Fashion Santa on Dec. 22, 2015. It was said to be in progress no later than September 2014, three months prior to the start of his mall appearances.

The article further reports the Oxford Properties Group Inc. which manages the mall, on Dec. 8, 2015 filed an application to trademark “Fashion Santa" and “Yorkdale Fashion Santa.” On Dec. 21, 2015 Mason applied for a trademark on “Fashion Santa.” None have been registered.

Simpson, who is not involved in the case and comments generally, tells the Star that he was surprised a copyright was registered to Mason for Fashion Santa, even though a character or costume can be copyrighted.

He notes that a “character is more than a name. And if it’s just a name then it (should be) a trademark.”

Simpson tells the newspaper that it will be up to Mason to oppose Yorkdale because the mall was the first to apply for a trademark. He notes the argument will probably be resolved over a determination of who used the idea first, not who thought of it, and terms of a contract between the two parties.

“Was Mason an independent contactor who used Fashion Santa as a brand for his services?” he asked in the Star article. “Or is he just the vehicle by which Yorkdale is using Fashion Santa as a brand to promote its services to its customers?"

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