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to obtain a sale of the entire mortgaged property free from all liens, or unless "there is substantial doubt respecting the amount of debts due prior lien creditors," in which case "there is obvious propriety in making them parties, that the amount of the charge remaining on the land after the sale may be determined, and that purchasers at the sale may be advised of what they are purchasing; " or unless there are other peculiar circumstances making it necessary. Nor need a mortgagor who has sold his equity of redemption, nor a guarantor of the mortgage, even if he has paid interest, be made a party to a foreclosure, unless relief is sought against him. When, however, such relief is sought against the mortgagor or a grantee of the equity of redemption who has assumed payment of the mortgage, all grantees who have made such an assumption should ordinarily be joined as defendants in order that their respective rights may be determined.10 Lessees are not necessary, although they are proper parties to a suit to foreclose a mortgage prior to their leases," or to foreclose a vendor's lien.12 In a suit by the holders of bonds secured by a trust mortgage to recover damages from the trustee for his negligent administration of the trust, the mortgagor need not be made a party, but it has been held that the bill must be filed on behalf of all

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Hagan v. Walker, 44 How. 29; Jerome v. McCarter, 94 U. S. 734, 735; McClure v. Adams, 76 Fed. R. 899.

6 Strong, J., in Jerome v. McCarter, 94 U. S. 734, 735, 736.

7 Kanawha Coal Co. v. Kanawha & O. C. Co., 7 Blatch. 391, 416; Grove v. Grove, 91 Fed. R. 865. But see Matcalm v. Smith, 6 McLean, 416. As to receivers, infra, § 45.

8 Columbia F. & Trust Co. v. Kentucky U. Ry. Co., 60 Fed. R. 794.

9 Ayers v. Wisa wall, 112 U. S. 187. 10 Skinner v. Harker, 23 Colo. 333; s. c., 48 Pac. R. 648. But see Kelly v. Ashford, 133 U. S. 610, 626; infra, § 53.

Tyler v. Hamilton, 62 Fed. R. 187. It has, been held that tenants under leases by a railway company, subject to mortgages of the property, are not necessary parties to a fore

closure suit, and that their rights are therefore extinguished by the foreclosure sale (Ibid.), and that neither the first mortgagee, the mortgagor, nor any lessor, is a necessary party to the foreclosure of a second railroad mortgage covering leased lines, but not affecting the rights of the lessors, when all the property is in the hands of the receivers. Grand Trunk Ry. Co. v. Central Vt. R. Co., 88 Fed. R. 622.

12 Brisco v. Minah Consol. Min. Co., 82 Fed. R. 952. It was held in Mississippi, where a mortgagor had conveyed land to the children of his mortgagee, that the latter were not necessary parties to a suit by the mortgagor against the mortgagee for an injunction and an accounting. Lipscomb v. Jack (Miss., 1896), 20 S. R. 883.

the bondholders and not merely on behalf of those who are joined as complainants.13

So, in suits for specific performance, it is a general rule that none are necessary parties but parties to the contract, or their representatives," including in a proper case their heirs 15 and devisees; 16 unless there are other persons with such an interest in the contract or the property agreed to be sold that concurrence is necessary to the completion of the title, or that their rights would be prejudiced were a decree made in their absence.17

Nor need the assignor of the whole interest in a thing in action be made a party to a suit by the assignee; 18 except in the case of a suit by the equitable assignee of a patent," or copyright,20 or trade-mark," or by the licensee," or mortgagor

13 Frishmuth v. Farmers' L. & T. Co., 95 Fed. R. 5.

14 Tasker v. Small, 3 M. & C. 63, 68; Calvert on Parties (2d ed.), Book III, ch. xvii.

15 Morgan's Heirs v. Morgan, 2 Wheat. 290.

20 Colburn v. Duncombe, 9 Sim. 151; Chappell v. Purday, 4 Y. & C. 485; Calvert on Parties (2d ed.), 315.

21 Krauss v. Jos. R. Peebles Sons Co., 58 Fed. R. 585.

22 Waterman v. Mackenzie, 138 U. S. 252, 255, 256, 260, 261, per Gray, J.:

16 Buck v. Buck, 11 Paige (N. Y.), "The patentee or his assigns may,

170.

17 Jones v. Lewis, 1 Cox Eq. 199; Evans v. Jackson, 8 Sim. 217; Calvert on Parties, Book III, ch. xvii. Where the contract is made by an agent in his own name he is a necessary party to a suit by his principal for specific performance. Pennsylvania & N. J. R. Co. v. Byerson, 36 N. J. Eq. 112, 116. It has been held that in such a case he can sue without joining his principal although defendant knew that he acted as an agent only. Kelley v. Tracy, 102 Mo.

522.

18 Harris v. Johnston, 3 Cranch, 311; Boon v. Chiles, 8 Pet. 532; Robertson v. Carson, 19 Wall. 94; s. c., Chase's Dec. 475; Batesville Institute v. Kauffman, 18 Wall. 151; Fulham v. McCarthy, 1 H. L. C. 703.

19 Stimpson v. Rogers, 4 Blatchf. 333; North v. Kershaw, 4 Blatchf. 70; Patterson v. Stapler, 7 Fed. R. 210; Goodyear v. Allen, 3 Fisher, 284.

by instrument in writing, assign, grant and convey either, first, the whole patent, comprising the exclu sive right to make, use and vend the invention throughout the United States; or, second, an undivided part or share of that exclusive right; or, third, the exclusive right under the patent within and throughout a specified part of the United States. R. S., § 4898. A transfer of either of these three kinds of interests is an assignment, properly speaking, and vests in the assignee a title in so much of the patent itself, with a right to sue infringers; in the second case, jointly with the assignor; in the first and third cases, in the name of the assignee alone. Any assignment or transfer, short of one of these, is a mere license, giving the licensee no title in the patent, and no right to sue at law in his own name for an infringement. R. S., § 4919; Gayler v. Wilder, 10 How.

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by a mortgage duly recorded at Washington, or by an assignee under an assignment still executory," or by an assignee, not a grant of a title in the whole patent-right within the district, and is therefore only a license. Such, for instance, is a grant of the full and exclusive right to make and vend' within a certain district, reserving to the grantor the right to make within the district to be sold outside of it. Gayler v. Wilder, above cited. So is a grant of the exclusive right to make and use,' but not to sell, patented machines within a certain district. Mitchell

477, 494, 495; Moore v. Marsh, 7 Wall. 515. In equity, as at law, when the transfer amounts to a license only, the title remains in the owner of the patent; and suit must be brought in his name, and never in the name of the licensee alone, unless that is necessary to prevent an absolute failure of justice, as where the patentee is the infringer, and cannot sue himself." Adriance, P. & Co. v. McCormick H. M. Co. (C. C. A.), 56 Fed. R. 918; Littlefield v. Perry, 21 Wall. 205. "Any rights of the licensee must be enforced through or in the name of the owner of the patent, and perhaps, if necessary, to protect the rights of all parties, joining the licensee with him as a plaintiff. R. S., § 4921; Littlefield v. Perry, 21 Wall. 205, 223; Paper Bag Cases, 105 U. S. 766-771; Birdsell v. Shaliol, 112 U. S. 485-487. And see Renard v. Levinstein, 2 Hem. & Mil. 628. Whether a transfer of a particular right or interest under a patent is an assignment or a license does not depend upon the name by which it calls itself, but upon the legal effect of its provisions. For instance, a grant of an exclusive right to make, use and vend two patented machines within a certain district is an assignment, and gives the grantee the right to sue in his own name for an infringement within the district, because the right, although limited to making, using and vending two machines, excludes all other persons, even the patentee, from making, using or vending like machines within the district. Wilson v. Rousseau, 4 How. 646, 686. On the other hand, the grant of an exclusive right under the patent within a certain district, which does not include the right to make, and the right to use, and the right to sell, is

v. Hawley, 16 Wall. 544. So is an instrument granting 'the sole right and privilege of manufacturing and selling' patented articles, and not expressly authorizing their use, because, though this might carry by implication the right to use articles made under the patent by the li censee, it certainly would not authorize him to use such articles made by others. Hayward v. Andrews, 106 U. S. 672. See also Oliver v. Rumford Chemical Works, 109 U. S. 75. A patent-right is incorporeal property, not susceptible of actual delivery or possession; and the recording of a mortgage thereof in the Patent Office, in accordance with the act of Congress, is equivalent to a delivery of possession, and makes the title of the mortgagee complete towards all other persons, as well as against the mortgagor. . . . The necessary conclusion appears to us to be that Shipman, being the present owner of the whole title in the patent under a mortgage duly executed and recorded, was the person, and the only person, entitled to maintain such a bill as this, and that the plea, therefore, was rightly adjudged good."

23 Ibid.

24 Land Co. of New Mexico v. Elkins, 20 Fed. R. 545.

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such as a pledgee, whose assignor has an equitable interest in the property, when it is the safer practice to join, as plaintiff or defendant, the assignor, licensor or mortgagee, as the case may be. The exclusive licensee of a patent for a specified territory has the implied authority, even against the will of the owner, to join him as a co-complainant in a bill to enjoin an infringement. The patentee and his exclusive licensee may join in a suit to enjoin the infringement of a patent,27 but the patentee and a licensee whose license is not exclusive cannot.2 Such a licensee is ordinarily not a proper party plaintiff." An cxclusive licensee need not ordinarily be joined as a complainant with the patentee. The assignee of the whole of a patent, so far as a particular territory is concerned, need not be made a party to a suit by the assignor to enjoin infringements elsewhere.31

28

It has been held at Circuit that a tax collector is not a proper party to a bill to set aside a conveyance made by him. And, as has been said before, no persons should be joined as plaintiffs, or defendants," who claim the property in question under inconsistent titles. For example, a mortgagee cannot maintain a bill against the mortgagor for a foreclosure, which at

25 Hubbard v. Manhattan Trust Co. (C. C. A.), 87 Fed. R. 51, 57; Western Nat. Bank v. Armstrong, 152 U. S. 846; Ackerson v. Long Branch & L. Co., 28 N. J. Eq. 542.

26 Brush-Swan El. L. Co. v. Thomson-Houston El. Co., 48 Fed. R. 224; Brush El. Co. v. El. Imp. Co., 49 Fed. R. 73; Brush El. Co. v. California El. L. Co. (C. C. A.), 52 Fed. R. 945; Excelsior W. P. Co. v. Allen (C. C. A.), 104 Fed. R. 553. It was held in Van Orden v. Nashville, 67 Fed. R. 331, that the part owner of a patent cannot sue at law for damages caused by an infringement without joining his fellow-owners as co-plaintiffs, and that he cannot make them defendants when they refuse to sue.

27 Ibid.

30 Union S. & S. Co. v. Johnson R. R. Signal Co., 52 Fed. R. 867; Gayler v. Wilder, 10 How. 477. "In the case of Waterman v. MacKenzie, 138 U. S. 252, 11 Supr. Ct. R. 334, the Supreme Court held that a licensee might sue in his own name when it was necessary to prevent an absolute failure of justice. This is the effect, I take it, of the language of the court there used." Knowles, D. J., in Brush El. Co. v. California E. L. Co. (C. C. A.), 52 Fed. R. 945, 961.

31 Canton S. R. Co. v. Kanneberg, 51 Fed. R. 599, 600.

32 West v. Duncan, 42 Fed. R. 430. 33 Marquis Cholmondeley v. Lord Clinton, 2 Jac. & W. 1, at p. 135; Saumarez v. Saumarez, 4 M. & C. 331, 336. See Parsons v. Lyman, 4 Blatchf.

28 Blair v. Lippincott Gl. Co., 52 C. C. 432; infra, § 73. Fed. R. 226.

29 Ibid.

34 Dial v. Reynolds, 96 U. S. 340; infra, § 73.

35

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the same time seeks to enjoin a claimant adverse to both mortgagor and mortgagee from asserting his title to the mortgaged property. An interest in the question of law involved is not sufficient to make a person a necessary or even a proper party,36 except when a bill of peace is filed. The equity rules, following the English orders in chancery, also provide that “in all cases in which the plaintiff has a joint and several demand against several persons, either as principals or sureties, it shall not be necessary to bring before the court as parties to a suit concerning such demand all the persons liable thereto; but the plaintiff may proceed against one or more of the persons severally liable." " This rule, however, only applies when the demand is both joint and several, not when it is merely joint; 39 and when one of two or more jointly and severally indebted is the principal debtor, to whom the others are sureties, he must, it seems, always be joined in a bill filed by the creditor to enforce a security against either of the latter." Concerning the chancery order from which Rule 51 was copied, ViceChancellor Shadwell said that it "applied to cases where several persons were liable in different characters,- that is, some as principals and the rest as sureties; and then it was sufficient to make one individual of each class a party; but where there was only one principal and one surety, both of them must be made parties." 40

38

§ 45. Cases where the law has furnished a representative. On account of the inconvenience which would be caused if the general rule were enforced in all cases, there are several classes of exceptions to it. The first of these exists when the law has furnished a representative of the interest in question. In such a case, those whom he represents are not usually necessary parties to the suit. Thus, until they have distributed the decedent's estate, executors and administrators are deemed suffi

35 Ibid. But see Hefner v. Northwestern Life Ins. Co., 123 U. S. 747. 36 Vallette v. Whitewater Valley Canal Co., 4 McLean, 192.

37 Rule 51, copied from the 32d Order in Chancery of August, 1841. 38 Pierson v. Robinson, 3 Swanst. 139, n.

39 Robertson v. Carson, 19 Wall. 94; Wilson v. City Bank, 3 Sumn. 423;

Allen v. Houlden, 6 Beav. 148; Pinkus v. Peters, 5 Beav. 253.

40 Lloyd v. Smith, 13 Sim. 457, 458, 459.

§ 45. 1 Wallworth v. Holt, 4 M. & C. 619; Powell v. Wright, 7 Beav. 449.

2 Calvert on Parties (2d ed.), 22. See Hopkins v. Page, 2 Brock. 20, 42. 3 Carey v. Roosevelt, 81 Fed. R. 608.

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