Party's Sale of Print Journals After Making Microfilm Copies for Library May Not Be Protected Under §108

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There were disputed issues of material fact with respect to whether a party that converted a library's print version of a scholarly journal to microfilm, and then gave the microfilm to the library and gave the printed copy to a third party that then sold it, was protected by Section 108 of the Copyright Act, the U.S. District Court for the Middle District of Pennsylvania held April 10 (Elsevier Inc. v. Comprehensive Microfilm & Scanning Services Inc., M.D. Pa., No. 3:10-cv-02513-JMM, 4/10/13).

The court denied summary judgment motions by the plaintiff publishers, the defendants accused of making the microfilm, and a third party that allegedly sold both the original print copies and additional microfilm copies for profit. The court said that at this time it was not clear if the defendant was protected by the Copyright Act's statutory extension of certain fair use defenses to libraries, 17 U.S.C. §108.

Specifically, the court said that it is disputed whether the defendants were in fact working on behalf of library, and whether the defendants made more than one copy of the journal. If more than one copy was made, or if the defendants worked on behalf the third party and not a library, then the provisions of Section 108 may not apply, the court said.

The court also declined to grant any party summary judgment on the publishers' trademark infringement claims. The defendants argued that the marks--images imprinted on the hardbound journals--were not used in commerce because they were merely returned to the libraries. The court was skeptical, saying this argument is “without merit” in part because the defendants were paid to make the copies of the journals. However, the question of whether the defendants' actions resulted in a likelihood of confusion in violation of the Lanham Trademark Act of 1946 was best decided by a jury, the court said.

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