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Fashion Santa in Toronto

An interesting clash between the rights afforded under trademark and copyright law is brewing in Toronto, just in time for the holiday season.

Toronto model Paul Mason, popularly known as the “Fashion Santa”, is considering his legal options after being replaced in a popular holiday advertising campaign at Yorkdale Mall. Mr. Mason’s stylish outfits and distinctive white beard created quite the social media sensation in 2015, putting a distinctly modern spin on our concept of Old St Nick. You can read more about this unique IP case here.

However, for reasons that haven’t fully been worked out just yet, Yorkdale Mall replaced Mr. Mason with another model for the 2016 holiday season, who has clearly adopted a similar look.

Interestingly enough, both parties were proactive in trying their best to secure intellectual property rights in the “Fashion Santa” concept, albeit in slightly different ways: Mr. Mason registered copyright in Fashion Santa as a literary work and filed a trademark application, while Yorkdale Mall proceeded to file trademark applications directed to the names “Fashion Santa” and “Yorkdale Fashion Santa”.

None of the trademarks have been registered by the Canadian Intellectual Property Office at the moment, and it is important to note that any interested third party has the right to oppose the registration of a Canadian trademark application for an exhaustive set of reasons laid out at s. 38 of the Trade-marks Act. It is certainly safe to say that neither party will be obtaining any trademark registrations for the “Fashion Santa” concept in the near future, without at least somewhat of a legal fight.

However, Mr. Mason’s successful copyright registration poses some very interesting questions from an intellectual property law perspective. Copyright registrations carry a presumption of validity, however this presumption can be rebutted. To this point, copyright arises automatically upon the creation of most original artistic works; however, there is certainly going to be some questions whether the mere name “Fashion Santa” is sufficiently original and sufficiently extensive to give rise to a protectable literary work under the Copyright Act.

Moreover, many readers may appreciate that trademark rights arise upon commercial use of the trademark. This raises the question of who first used “Fashion Santa”? Is it the model who offers modelling services, or the commercial entity who is running a promotional and advertising campaign related to a shopping centre? Further, has either party actually offered its services in connection with the display of the trademark?

These questions are certain to be raised by both sides in the dispute, and at the moment neither party has proceeded with litigation. However, given the very short commercial opportunity offered by the holiday season, we are certain to see developments in the very near future. Stay tuned to this space for updates!

If you have any further questions about a trademark application, please contact our Intellectual Property Group.

This content is not intended to provide legal advice or opinion as neither can be given without reference to specific events and situations. © 2021 Nelligan O’Brien Payne LLP.

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