For two Christmas seasons in a row the chic white-bearded 50-something-year-old model, Paul Mason, has donned designer garb and paraded around Yorkdale mall calling himself “Fashion Santa”. Just as we enter into the festive holiday season, a legal debate is brewing over this dapper Saint Nick that has everyone asking who owns “Fashion Santa”? Paul Mason or the mall? And what is “Fashion Santa”, an idea? a brand? a character?
Here is a simple approach to this very seasonal dispute over intellectual property rights:
It’s worth beginning by noting that, for the purposes of intellectual property law, it does not matter whose idea “Fashion Santa” was. Unless there is a contract saying otherwise, ideas on their own are generally not protected.
An answer to who owns “Fashion Santa” depends on whether “Fashion Santa” is a trademark, a character or a pseudonym for an individual.
If “Fashion Santa” is a trademark, it is important to identify who was using it first to distinguish themselves as the source of goods or services. Generally speaking, the first person or company to use a brand to identify themselves as the source of goods and services associated with that brand can assert exclusive rights in it. So, if Paul Mason was using the brand “Fashion Santa” in association with, for example, fundraising services before taking it to the mall, then he may have a claim to the mark based on prior use. If, however “Fashion Santa” was merely an idea pitched by Paul Mason to the mall but first implemented by Yorkdale as a brand to promote their services, then Yorkdale is more likely to be the rightful owner of the trademark. If it could be shown that “Fashion Santa” was a trademark, then a dispute over ownership would likely come down to which party could prove the earliest use of the trademark (unless there was a contract to the contrary).
“Fashion Santa” may also be a character, in which case it could be proper subject matter for copyright protection. Copyright law offers protection for original works and the characters that are parts of those works. While the name “Fashion Santa” likely would not attract copyright protection because copyright does not protect names, the character itself might be enough to attract copyright protection if it were understood to be part of a literary, dramatic or artistic work. Courts in Canada have said that there can be copyright in original, clearly delineated characters where their personal qualities are characteristically and physically distinctive, thorough and complete.
If “Fashion Santa” were a copyrighted character, then its first owner would be its author, that is, whoever created “it”.
If Paul Mason uses “Fashion Santa” as an alias or a pseudonym, then he may be able to assert publicity rights to “Fashion Santa”. The right of publicity, often called, personality rights, is an individual’s right to control commercial uses of his or her name, image, likeness or other unmistakable aspects of his or her identity. Therefore, any use of his likeness in association with the name, “Fashion Santa” by anyone other than Paul Mason could be a misappropriation of personality, an actionable tort in Ontario.
These questions are not always easily resolved and the answer isn’t always fair.
For more about this seasonal story, check out this article in the Toronto Star where Shift Law's John Simpson was quoted.