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Photo by Mel Poole on Unsplash

Should Anyone Own Santa?

Published December 17, 2018

The holiday season may be a time for giving, but it’s also a time for lawyers to assert rights over things the average person might think should be free to all to use.

Take the case of “Fashion Santa.”  In 2015, model Paul Mason appeared as a stylish, buff metrosexual version of Kris Kringle for Toronto’s Yorkdale Mall.  Fashion Santa was a holiday season smash.  He earned plenty of hits on social media and brought traffic into the mall.  But clouds appeared the next year when the Mall and Mason got into a legal contretemps about who should hold the rights in Fashion Santa.  Yorkdale tried to replace Mason by hiring a new model to serve as Fashion Santa.  Mason balked.  Finally, after years of legal wrangling, a settlement was reached and Mason earned the rights to Fashion Santa, including a trademark in the name awarded by the Canadian Intellectual Property Office.

            There are other examples of legal battles over beloved Christmas characters.  In fact, characters are a frequent subject of intellectual property law.  The estate of Dr. Seuss has sued under copyright law to block use of his Grinch character.  Coca-Cola holds a federal trademark in the United States for its version of Santa Claus, very much the big jolly man in a red suit and white beard that is common today. 

            But when should a human actor be able to control rights of the characters he or she inhabits?  On the one hand, we may feel a natural sympathy with people like Mason or actors that play unforgettable roles on stage and screen.  If they were the ones who put in the work, shouldn’t they be able to use the law to prevent new parties from stealing their roles?  In a favorite case in law school classes, Wheel of Fortune’s Vanna White was able to claim intellectual property rights in her letter-turning role, blocking an electronics company from showing an ad featuring a robot in the blonde wig, pearls, and a black dress standing next to the game show’s famous letterboard.

            On the other hand, one can argue that performers work with a host of other people to create a famous character.  Writers, directors, costume designers, lighting specialists and others all contribute to the realization of a compelling public personality.  And there can sometimes be a good reason for making reference to a popular character with asking for permission first, as in the case of news reporting or critical commentary.   

            As a result, the law treads carefully here.  The right of publicity (called “personality rights” in Canada) prevents businesses from commercially using the name or likeness of someone without their permission.  But actors have only been allowed to invoke the right against someone else’s use of a fictional character when the actor has become “inextricably identified” in the public’s mind with the part they were given to play.  Trademark law allows one party to stop other parties from using their name or symbol in the marketplace.  But the unauthorized use has to be confusing.  Otherwise, trademark law would become a blunt instrument for censoring undesirable speech. 

            Perhaps Mason really did endow Fashion Santa with something special and has become “inextricably intertwined” with metrosexual Santas.  And maybe he has become so synonymous with the Fashion Santa name that it would be confusing to the public for another Fashion Santa to exist.  But maybe not.  Now those going to the Yorkdale Mall won’t get to see Fashion Santa this Christmas.  In this particular case, did the law make things better?  I’m tempted to say “humbug.”

            Mostly, however, this case shows that good lawyering can potentially stop problems before they start.  My guess is that Mason and the Mall did not realize that the public would be so entranced by this stylish version of Santa until it was too late.  The problem could have been avoided perhaps if the parties had begun their relationship with a contract clearly assigning the rights in the character.  Which just goes to show that good lawyers are always needed, even at Christmas.

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Photo of Mark Bartholomew, professor at UB School of Law

Mark Bartholomew is a professor at the University at Buffalo School of Law and the author ofAdcreep: The Case Against Modern Marketing.”

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