Elsevier Inc. et al v. Comprehensive Microfilm & Scanning Services, Inc. et al

Filing 33

MEMORANDUM ORDER granting 19 Motion to join additional dfts; and granting 25 Motion for Leave to File amended complaint.Signed by Honorable James M. Munley on 5/17/11 (sm, )

IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF PENNSYLVANIA
ELSEVIER INC.; ELSEVIER B.V.;
ELSEVIER LTD.; MOSBY, INC.;
JOHN WILEY & SONS, INC.;
BLACKWELL PUBLISHING, LTD;
WILEY PERIODICALS, INC.;
WILEY-LISS, INC.; and
AMERICAN CHEMICAL SOCIETY,
Plaintiffs

:
No. 3:10cv2513
:
:
(Judge Munley)
:
:
:
:
:
:
v.
:
:
COMPREHENSIVE MICROFILM &
:
SCANNING SERVICES, INC.;
:
JAMES A. WASILEWSKI; and
:
JOHN DOES NOS. 1 - 10,
:
Defendants
:
::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::
MEMORANDUM
Before the court for disposition are a motion to join additional
defendants filed by Defendants Comprehensive Microfilm & Scanning
Services, Inc. and James A. Wasilewski, and a motion to file an amended
complaint filed by Plaintiffs Elsevier Inc., Elsevier B.V., Elsevier Ltd,
Mosby, Inc. (hereinafter collectively “Elsevier”), John Wiley & Sons, Inc,
Blackwell Publishing, Ltd., Wiley Periodicals, Inc., Wiley-Liss, Inc.
(hereinafter collectively “Wiley”) and American Chemical Society
(hereinafter “ACS”). Both motions, which are opposed, are fully briefed
and ripe for disposition.
Background
Plaintiffs publish many of the world’s leading scientific, technology
and medical journals. (Doc. 1, Compl. ¶ 1). They bring this action to
recover damages for Defendants’ alleged acts of copyright infringement,
trademark infringement, trademark counterfeiting and unfair competition.
Plaintiffs are in the business of publishing journals comprised of
peer-reviewed articles authored by scholars, which are often based upon

original research. (Id. ¶ 19). Plaintiffs require the authors to assign
copyrights to them or grant them exclusive rights of reproduction and
distribution in the United States. (Id. ¶ 21). A substantial part of plaintiffs’
revenue is derived from the publication of the copyrighted works. (Id. ¶
22). Plaintiffs assert that the defendants unlawfully copy microfilm versions
of plaintiff’s journals for third parties. (Id. ¶ 28). Based upon these alleged
facts, plaintiffs instituted the instant action. The complaint consists of the
following five counts: Count I - Copyright Infringement against all
defendants; Count II - Contributory Copyright Infringement against
Defendant Wasilewski; Count III - Trademark Infringement against all
defendants; Count IV - Trademark Counterfeiting against all defendants;
and Count V - Common Law Unfair Competition Under State Law against
all defendants.
The defendants move to join additional defendants, and the plaintiffs
move to file an amended complaint, bringing the case to its present
posture.
Jurisdiction
As this case is brought pursuant to federal copyright law, 17 U.S.C. §
501 and federal trademark law, 15 U.S.C. §§ 1114(a) and 1117, we have
jurisdiction under 28 U.S.C. § 1331 (“The district courts shall have original
jurisdiction of all civil actions arising under the Constitution, laws, or
treaties of the United States.”). We have supplemental jurisdiction over
the plaintiffs’ state law claim pursuant to 28 U.S.C. § 1367.
Discussion
Before the court are the defendants’ motion for joinder and the
plaintiffs’ motion to file an amended complaint. We will address each in

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turn.
I. Motion for joinder
First, the defendants move to join as defendants several parties who
they claim contracted with them to perform the very services that are
alleged to have violated plaintiffs’ trademarks and copyrights. Defendants
are in the business of processing and making copies of microfilm and other
similar technologies. (Doc. 19, Defs.’ Mot. To Join ¶ 5). Defendants’
business involves a mass production operation and occasional checks for
production quality. They do not review materials for trademarks or
copyrights. (Id. ¶ 9). Anthony DeStephen, Princeton Microscan and
Franklin Crawford retained defendants to process materials and to make
an additional copy of various materials. (Id. ¶ 6). Defendants relied on
them to provide materials that were legal and not originals protected by
copyright or trademark laws. (Id. ¶ 7). Thus, defendants did not have
knowledge of the content of the materials submitted by DeStephen,
Crawford and Princeton Microscan. (Id.) Defendants now believe that
DeStephen, Crawford and Princeton Microscan created a scheme where
they took copyrighted works, specifically the scientific journals at issue,
reproduced them and sold them for a profit on the secondary market. (Id.
¶¶ 10 - 11). Accordingly, defendants’ position is that DeStephen, Crawford
and Princeton Microscan are solely responsible for the infringement of
plaintiffs’ copyrights and trademarks. (Id. ¶ 14). Defendants now move to
initiate a third-party complaint against these three and to add them as
additional defendants to the case.
Generally defendants may initiate a Third-Party Complaint against
“nonparty who is or may be liable to [the defendant] for all or part of the

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claim against [the defendant].” FED. R. CIV. P. 14(a)(1). The Third Circuit
Court of Appeals has explained as follows:
A third-party claim may be asserted under Rule
14(a) only when the third party's liability is in some
way dependent on the outcome of the main claim or
when the third party is secondarily liable to
defendant. If the claim is separate or independent
from the main action, impleader will be denied.
F.D.I.C. v. Bathgate, 27 F.3d 850, 873 (3d Cir. 1994) (quoting C.A. Wright,
A. Miller, M.K. Kane, Federal Practice and Procedure, Vol. 6, § 1446, at
355–58 (1990)).
Defendants’ proposed Third-Party Complaint asserts a claim for
contribution or indemnity as follows: “If Plaintiff recovers any damages
against Defendant Comprehensive Microfilm & Scanning Services Inc., and
James A Wasilewski [are] entitled to common law contribution and/or
indemnification as a result of the negligence, wrongful acts, or omissions of
the third-party Defendant, its agents, servants or employees, in causing
and/or contribution [sic] to the procession of the materials.” (Doc. 19-1,
Proposed Third-Party Complaint, ¶ 15).
Plaintiffs argue that indemnity/contribution are not available in
copyright/trademark cases and thus the motion to file a Third-Party
Complaint should be denied as futile. We disagree with the plaintiffs at
least to the extent that their complaint contains not only copyright and
trademark claims, but also a state common law claim for unfair
competition. Plaintiffs raise no convincing argument as to why contribution
or indemnity would be futile with respect to that claim.1 Accordingly, we will

1

Plaintiff mainly argues that the defendants are not entitled to
contribution or indemnity in a trademark or copyright action. This issue,
however, is best left to a later date in light of the fact that the complaint
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grant the defendants’ motion for leave to join.
II. Motion To Amend
The second motion for the court to address is the plaintiffs’ motion to
file an amended complaint. Plaintiffs seek to file an amended complaint to
add the following plaintiffs: Elsevier Science Inc., Elsevier Science B.V.,
Elsevier Science Ltd., and John Wiley & Sons, Ltd. They also seek to add
additional copyrighted works to the amended complaint.
Rule 15(a) of the Federal Rules of Civil Procedure provides that a
party may amend its pleading after a responsive pleading is served only by
leave of the court. FED. R. CIV. P. 15(a). District courts must grant leave
liberally “when justice so requires.” FED. R . CIV. P. 15(a); Gay v. Petsock,
917 F.2d 768, 772 (3d Cir. 1990).
The Supreme Court discussed the liberal standard to amend a
complaint under Rule 15(a), when it found in Forman v. Davis that “[i]n the
absence of any apparent or declared reason--such as undue delay, bad
faith, or dilatory motive on the part of the movant, repeated failure to cure
deficiencies by amendments previously allowed, undue prejudice to the
opposing party by virtue of the amendment . . . , the leave sought should,
as the rules require, be freely given.” Provenzano v. Integrated Genetics,
et al., 22 F. Supp. 2d 406, 410-11 (3d Cir. 1998) (quoting Foman v. Davis,
371 U.S. 178, 182 (1962)).
In applying Rule 15(a), the Third Circuit Court of Appeals regards the
possibility of prejudice to the non-moving party as the “touchstone for the
denial of the amendment.” Bechtel v. Robinson, 886 F.2d 644, 652 (3d Cir.

contains the above-mentioned tort claim in addition to the trademark and
copyright claims.
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1989) (quoting Cornell & Co., Inc. v. Occupational Safety and Health Rev.
Comm'n, 573 F.2d 820, 823 (3d Cir.1978)). Absent undue prejudice,
“denial must be grounded in bad faith or dilatory motives, truly undue or
unexplained delay, repeated failure to cure deficiency by amendments
previously allowed or futility of amendment.” Heyl & Patterson Int’l, Inc. v.
F.D. Rich Hous. of the Virgin Islands, 663 F.2d 419, 425 (3d Cir.1981)
(citing Cornell, 573 F.2d at 823).
Plaintiffs indicate that recently discovered that they inadvertently
omitted parties and the copyrighted works from the schedules appended to
the original complaint. It is these parties and works that they now seek to
add to the complaint. Defendants oppose the motion to amend on the
basis that the discovery period is halfway over and the number of proposed
new copyright infringements total more than 53% of the original claims. As
noted above, however, prejudice is the touchstone of denial of leave to
amend. Defendants point to no undue prejudice. There appears to be no
bad faith, dilatory motives or undue delay on the part of the plaintiffs.
Accordingly, the motion to amend will be granted.2

2

If necessary, the court will entertain a motion for an extension of the
discovery deadline. Such an extension may be even more appropriate as
we also are granting the defendants’ motion for joinder.
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IN THE UNITED STATES DISTRICT COURT
FOR THE MIDDLE DISTRICT OF PENNSYLVANIA
ELSEVIER INC.; ELSEVIER B.V.;
ELSEVIER LTD.; MOSBY, INC.;
JOHN WILEY & SONS, INC.;
BLACKWELL PUBLISHING, LTD;
WILEY PERIODICALS, INC.;
WILEY-LISS, INC.; and
AMERICAN CHEMICAL SOCIETY,
Plaintiffs

:
No. 3:10cv2513
:
:
(Judge Munley)
:
:
:
:
:
:
v.
:
:
COMPREHENSIVE MICROFILM &
:
SCANNING SERVICES, INC.;
:
JAMES A. WASILEWSKI; and
:
JOHN DOES NOS. 1 - 10,
:
Defendants
:
::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::::
ORDER
AND NOW, to wit, this 17th day of May 2011, it is hereby ORDERED
as follows:
1) The defendants’ Motion To Join Additional Defendants (Doc. 19) is
GRANTED; and
2) The plaintiffs’ Motion for Leave To File an Amended Complaint
(Doc. 25) is GRANTED. The Clerk of Court is directed to docket the
Amended Complaint attached as Exhibit A to the plaintiffs’ motion.
BY THE COURT:
s/ James M. Munley
JUDGE JAMES M. MUNLEY
United States District Court

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