Toronto’s Yorkdale Shopping Centre (“Yorkdale”) has forever changed the way we visualize Santa Claus. Paul Mason, aka “Hot Santa”, was hired by Yorkdale to portray a modern Santa Claus. Through the gift of social media, Hot Santa went viral, with many oogling over the transformation of how we view Santa Claus. And, Paul Mason received instant stardom. Source
This year, Yorkdale was not successful in re-hiring Paul Mason for the role of Santa Claus, so they hired an equally handsome and modern Santa Claus, Adam Martin. Now, Yorkdale Shopping Centre and Paul Mason are fighting over the ‘Fashion Santa’ brand that both parties took part in making a success. A question I never thought I would ask: Who has the legal rights to the “Fashion Santa”? Both parties have filed for trademarks to ‘Fashion Santa’, and Hot Santa started registering the copyright for Fashion Santa long before he was featured at Yorkdale Shopping Centre. However there are other legal issues that need to be taken into consideration, including:
- Whether an employment/consulting agreement was entered into between Yorkdale and ‘Fashion Santa’ and who retained ownership of the brand; and
- The similarities between the ‘Fashion Santa’ character and the new Yorkdale character.
The latter will be a complex issue, since both parties have applied for trademark registration of ‘Fashion Santa’. Since Yorkdale filed their trademark application first, it is likely that they will get priority for the trademark. This is not the first time a character has been disputed between an employer/company and the person actually playing the character. Recently, Stephen Colbert reincarnated his famous Colbert character from The Colbert Report on his new night show. He publicly stated his limitations due to copyright, but instead introduced his old character’s ‘twin’.
Including the following sort of clause can help protect an employer from having a person hired to play a character from taking the character with him: “The employee/consultant understands that all proprietary information and work product is the property of the company. In addition, the employee/consultant hereby agrees to assign to the company, without further consideration, all existing and future rights that the employee/consultant may presently have or may acquire, free and clear of all liens and encumbrances, in and to the proprietary information and work product, which shall be the sole property of the company, whether or not it is registrable intellectual property.”
The contract drafter can also define ‘proprietary information’ and ‘work product’ based on the specific circumstances the contract is being drafted for. This will help to create greater certainty. You never know what idea is going to attract instant fame, so it is always a good idea to protect yourself with the right legal document. Make sure Santa Claus has the right clause!