The opinion of the court was delivered by: Judge Munley
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.
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.
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.
Before the court are the defendants' motion for joinder and the plaintiffs' motion to file an amended complaint. We will address each in turn.
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 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 ...