November 30, 2016
In the classic Christmas film Miracle on 34th Street, a department store Santa Claus has to go to court to prove that he is in fact the real Jolly Old Saint Nick. Now, in a real life contemporary twist on this story, Yorkdale Mall’s original Fashion Santa, model Paul Mason, is going to court to prove that he is the one and only, after being replaced ahead of this year’s holiday season.
You may remember Fashion Santa after he exploded on social media throughout the last two years. Starting in December 2014, Yorkdale, located in North Toronto, introduced a new hip Santa Claus for the season’s ad campaigns and to appear around the mall. With a thin figure and sporting a nicely groomed white beard and a stylish wardrobe, shoppers took photos with him en masse, proliferating his image throughout the web.
This year, Yorkdale is keeping the Fashion Santa brand but now has a new model, Adam Martin, to play the part. Needless to say, Mason is none too happy about this. He claims that Fashion Santa was his idea and that it’s technically his brand, meaning Yorkdale can’t use it without him. While he was approached by Yorkdale to reprise the role this year, Mason alleges that the mall wanted to put “conditions” on his employment so he turned them down. Now that they’ve gone ahead anyway with Martin, Mason aims to take them to court.
According to records from Industry Canada’s intellectual property office, Mason actually does hold a copyright for Fashion Santa. But the term has not been officially trademarked yet, and Yorkdale’s application to do so was submitted before Mason’s.
Legal experts, including University of Toronto professor Richard Powers who consulted on the Yorkdale campaign, believes that the mall will come out on top despite Mason’s copyright.
“If he’s copyrighting the name, I’m surprised you can obtain a copyright for that because the terms are generic,” Powers said. “Nobody owns the rights to Santa.”
Meanwhile, John Simpson, a lawyer specializing in intellectual property (unconnected to this case), said, “A character is more than a name. And if it’s just a name then it (should be) a trademark.”
For Yorkdale’s part, they claim that they had already been planning on launching a similar idea to use a bearded older model when Mason approached them with Fashion Santa. So the final result was a merging of the two ideas.
There’s nothing like a good old-fashioned legal battle to mark the holidays.
Source: Toronto Star