Q&A: ‘Maverick’ lawyer Marc Toberoff
Marc Toberoff, founding partner of Toberoff & Associates in California, considers himself to be a thorn in the side of Hollywood studios.
Big-name clients include the heirs of Marvel co-creator Jack Kirby; Jerry Siegel and Joe Shuster, the co-creators of “Superman”; and in a case against Disney, Toberoff is currently representing the estates of five freelance artists who co-created Marvel characters including Spider-Man, Iron Man, Doctor Strange, Hawkeye, Black Widow, Captain Marvel and Thor.
And he is also involved in a legal dispute against Paramount Pictures over its latest film, “Top Gun: Maverick”, which has rocketed up the box-office charts since its release last month.
The suit concerns alleged copyright infringement of the original idea that inspired the first “Top Gun”—the lives of real-life fighter pilots at a US air base, brought to life in a story for California magazine in 1983 authored by Ehud Yonay.
The family and heirs of the late writer, Shosh and Yuval Yonay, are now suing Paramount Pictures, represented by Toberoff & Associates.
WIPR spoke with Toberoff to find out more.
What would the impact be for rights holders if you win the case—and what if you don’t?
Decades ago, Congress passed the law, effective January 1, 1978, giving authors the right to recover their copyright in a work that has been successfully developed. The law was designed to allow authors who sold their rights for a pittance to share in the later success of the work.
There are strict time limits that need to be observed to invoke these rights, including a two-year advance notice period during which any derivative work in progress can be completed.
Paramount received this notice from the Yonays, but failed to complete its work on the film during the statutory grace period. While we do not expect there to be a flood of such cases, whatever cases are brought are ones that Congress specifically contemplated would benefit from the statute. So whether there is a flood or a drought of cases, it is precisely what Congress had in mind when it passed the statute.
We fully anticipate winning the case but if we should fail, that would certainly be detrimental to the rights of authors and contrary to what Congress intended.
With Covid having delayed the film’s release, could this favour Paramount?
The release date doesn't matter. What matters is when the derivative work, “Top Gun: Maverick”, was completed. We have evidence from public sources that the film was still in post production for at least a year after Paramount lost its copyright to Ehud Yonay's article—the copyright on which the original “Top Gun” was based.
In any event, Paramount originally delayed releasing the film to shoot more, and for special effects work, which was nothing to do with the pandemic. Paramount made a commercial decision not to release the film and continue working on it. They must now live with that decision.
Do copyright termination rights and the 'prior derivative works' exception offer adequate protection to both parties?
The law as passed by Congress is fair to both sides. Any derivative works completed before the termination date are covered by the initial copyright and belong to the studio.
But once the copyright is effectively terminated, as happened with “Top Gun”, the studio no longer has the right to create a derivative work and must obtain a new licence. This enables the author to finally share in the fruits of his/her creative work in a reasonable manner. The degree, of course, is subject to negotiation.
We would point out that Paramount was well aware that the copyright was terminated and could have negotiated a reasonable licence long ago, well before the film was released and anyone knew whether or not, and to what degree, the new film would be successful, but they chose not to bother.
As a consequence, they must now negotiate after it is well known that “Top Gun: Maverick” has been a financial success. The Yonays also have a claim for statutory damages and this, too, will influence the terms of any future licence.
Paramount has argued that “Maverick” was “sufficiently completed” by the date the copyright was terminated, which you have argued is a “disingenuous attempt to bootstrap the sequel into the ‘prior derivative works’ exception”. Is “sufficiently completed” a legitimate legal defence?
‘Sufficiently completed’ is not a term used in the Copyright Act—it is an invention by Paramount's lawyers. We read this as a concession that the film was not, in fact, completed on the date Paramount lost its copyright [January 24, 2020]. The law, 17 USC § 203(b)(1), is to the contrary. ‘Sufficiently completed’ means ‘uncompleted’ for purposes of the Copyright Act.
How costly could this be for Paramount?
“Top Gun: Maverick” is an immensely successful film. It was made and released without a licence from the author of the underlying work on which the original “Top Gun” was based. As Congress expected when it passed the copyright termination statute, the author of the original work is entitled to share in that success.
The Yonays recognise that much creative effort and money was deployed in producing “Top Gun: Maverick” and do not wish to deny fair compensation to others who have contributed to it. They expect only a fair share for the author without whose 1983 story neither the original “Top Gun” nor the sequel would ever have existed.
The public was enriched by being able to enjoy these films; Paramount and the creative talent that made “Top Gun: Maverick” have been enriched by the revenue from the film. Ehud Yonay's heirs ask only their fair share, commensurate with his contribution that started it all.
Rather than spending tremendous sums on attorney's fees, we invite Paramount to the negotiating table to work out a fair and honourable settlement, one that is consistent with what Congress intended when it passed the statutory termination provisions decades ago.
WIPR has contacted Paramount Pictures for comment.
