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Intellectual Property

Only lumps of coal for ex-Fashion Santa in trademark dispute

Both parties to a dispute over the right to trademark the term “Fashion Santa” could end up on the losing side, says Toronto intellectual property lawyer Kevin Fisher.

Paul Mason went viral in 2014 with his portrayal of Fashion Santa at Toronto's Yorkdale Shopping Centre as news outlets and social media users warmed to the stylish version of Father Christmas.

However, after returning to the role in 2015, the Toronto Star reports that the mall hired a new model to replace Mason this Christmas.

Now they are locked in an intellectual property rights battle, with both Mason and the mall applying to trademark the words “Fashion Santa,” the Star reports. But Fisher, a partner at Gardiner Roberts LLP in Toronto, doesn't like the chances that either will prevail.

“Those are very generic terms, and I doubt very much whether they will be able to obtain a trademark registration,” he tells AdvocateDaily.com.

The Star story says Oxford Properties Group Inc., which manages Yorkdale, submitted its trademark application to the Canadian Intellectual Property Office in early December last year, a couple of weeks before Mason's, which gives the mall the upper hand legally. 

“The first to register obviously gets the prize, and the other will have to oppose,” Fisher explains. “They may jointly oppose each other's application, but maybe neither will benefit ultimately. You can't trademark Santa, and fashion is a pretty generic term, so I think it's going to be very difficult for them.”

In addition to the disputed trademark application, the mall also applied for a trademark registration of the term “Yorkdale Fashion Santa,” says the Star, although none of them have received the government rubber stamp of registration. Meanwhile, Mason also applied to register copyright of Fashion Santa. That could prove a more fruitful avenue for Mason as long as he is able to establish that his portrayal of Fashion Santa was original enough to warrant copyright protection, says Fisher, who comments generally and is not connected to the case. 

“If his performance could fit into something that is copyrightable, in the sense that it is unique and something he came up with, rather than the mall, then the scales start to shift a bit in his favour,” he says, adding that registration would not even be required. In that case, copyright would originate with the first performance, more than a year previously.

“Then you would have to get into the specifics of the fact situation, and look at who came up with the concept, whether anything proprietary was taken from him, and the terms of any contract between him and the mall. As ever, the devil is in the details,” Fisher says.

In the Star story, Mason said he came up with the Fashion Santa idea in late 2014 and began touting it around to local malls as partners in a potential charity drive. Yorkdale, for its part, admitted Mason came to them, but claimed to have been planning its own similar event.

Lucia Connor, Yorkdale's marketing director, told the paper they wanted to use a “bearded older man” for its 2014 holiday campaign.

“Paul approached us about two weeks later and we brought them together. Yes, he was shopping it around and Yorkdale was looking for a bearded older model for their campaign,” she said.

In his own interview with the Star, Mason lamented the attention the spat has gained at this time of year.

“Christmas is supposed to be a tradition and I said I was starting a tradition with the public, a new tradition,” he said. “And this chain of events has broken the tradition for a lot of people.”

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