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Academic Copyright Battle Will Go to Jury

(CN) - A convoluted copyright infringement case Elsevier and other academic publishers filed over unprocessed microfilm will go to trial, a federal judge ruled.

The case stems from an admitted copyright-infringement scheme by Anthony DeStephen while he worked at Princeton Micro Scan from the 1970s to 2010.

DeStephen's scheme involved "making deals with hundreds of libraries to provide the library with a microfilm version of a journal in exchange for the paper journal, wherein he would take apart the binding of the paper journal, photograph each page at Princeton Micro Scan with the Princeton resources, send film for processing and then sell the paper journals to Educo Periodicals and Periodical Service Co," the ruling states, quoting filings from the parties.

Comprehensive Microfilm & Scanning Services allegedly processed and duplicated the microfilm for DeStephen, according to a complaint against Comprehensive filed by the American Chemical Society, Amsterdam-based Elsevier and its Maryland Heights, Mo.-based subsidiary Mosby Inc. John Wiley & Sons Inc. and its subsidiary, Blackwell Publishing, both of Hoboken, N.J., are also plaintiffs to the action.

Though DeStephen and Princeton Micro Scan were not named as defendants, they intervened as such in the case, along with Princeton president Franklin Crawford, who died while the case was pending.

Both Comprehensive and Princeton said Wasilewski had asked DeStephen "if copying the materials from libraries was illegal." DeStephen allegedly replied, "We've been doing it for years."

While Comprehensive claims that it was aware of neither the contents of the microfilm Princeton provided nor the presence of any trademarks or copyright protections, the publishers say it had the ability to find this information out, in that DeStephen did not conceal the contents.

The publishers entered into a release agreement with Princeton and Robert S. Chaykowsky, the executor of the Crawford's estate, in which a release was executed in exchange for a guaranteed minimum of $1 million resulting from the sale of a commercial building owned by Princeton.

All the parties filed motions for summary judgment, which U.S. District Judge Robert Mariani denied on April 10.

"Although the parties do not dispute that plaintiffs own the exclusive copyrights to the journals in question, there are substantial factual disputes with regard to the questions of alleged infringement and defendants' proffered defenses," Mariani wrote.

"In particular, the court may not engage in the resolution of disputed facts to determine the 'use' or 'adoption' of marks, the knowledge and willfulness of defendants in engaging in alleged illegal activities, whether defendants or the institutions for which microfilm copies were made may avail themselves of the fair use exception under Section 108 of the Copyright Act, and whether defendants constitute 'agents' under the terms of the release agreement," he added. "The very core of plaintiffs' arguments requires findings of fact. Accordingly, the factual issues set forth in plaintiffs' motion for summary judgment with regard to both its claims and arguments in opposition to defendants' affirmative defenses must be decided at trial."

The defendants' motions require that the court decide disputed issues of material fact, as well.

"In particular, the court will not engage in a factual analysis as to what Wasilewski knew with regard to the possible illegality of his actions, or whether anyone misrepresented or concealed the contents of the microfilm," The ruling states. "Defendants insist that they did not know that the material was copyrighted, but plaintiffs and the Princeton parties assert otherwise. These are issues more appropriately decided by a jury than a court at the summary judgment stage."

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