not necessary, although they are proper parties to a suit to foreclose a mortgage prior to their leases,11 or to foreclose a vendor's lien.12 Where part of the mortgaged premises had been sold to the sovereign power, which refused to waive its exemption from suit, and all the other parties in interest were joined; it was held, that the court could except the land so conveyed, decree a sale of the balance and enter a deficiency judgment, if the proceeds were insufficient.13 To a suit by the holder 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 the bondholders and not merely on behalf of those who are joined as complainants 14 It seems that in a suit to set aside attachments, attaching creditors, who have no joint interest with the defendants, may be omitted if their citizenship will oust the court of jurisdiction.15 Where the receivers of a corporation had made an absolute assignment of a cause of action to the complainant; it was held, that neither the corporation nor its receivers were necessary parties to a bill to enforce such cause of action, although one of the receivers was entitled to one-quarter of the collection.16 The personal representatives of a deceased partner are not necessary Kelly v. Ashford, 133 U. S. 610, 626, 33 L. ed. 667, 674; infra, § 120. 11 Tyler v. Hamilton, 62 Fed. 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 foreclosure suit, and that their rights are therefore extinguished by the foreclosure sale (Ibid.), and that when all the property is in the hands of the receivers, 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. Grand Trunk Ry. Co. v. Central Vt. R. Co., 88 Fed. 622. 12 Brisco v. Minah Consol. Min. Co., 82 Fed. 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. 13 Kawananakoa v. Polyblank, 205 U. S. 349, 51 L. ed. 834. 14 Frishmuth v. Farmers' L. & T. Co., 95 Fed. 5. 15 Watson v. Bonfils, C. C. A., 116 Fed. 157, 160. 16 Fidelity & Deposit Co. of Maryland v. Fidelity Trust Co., 143 Fed. 152. parties to a bill to vacate a decree in favor of the partnership.17 The United States are not necessary parties to a suit by a materialman upon bond given to the Government for the benefit of the plaintiff and persons similarly interested.18 In suits for specific performance, it is a general rule that none are necessary parties but parties to the contract, or their representatives, 19 including in a proper case their heirs 20 and devisees; 21 unless there are other persons, such as the wife of the defendant,22 with such an interest in the contract or the property agreed to be sold that their concurrence is necessary to the completion of the title, or that their rights would be prejudiced were a decree made in their absence.23 But where the contract calls for a title free from incumbrances the court may permit or direct the lienors to be joined.24 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.25 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.26 The licensee or assignee of a playright is not a proper party to a suit to enjoin the production of a motion picture play, which is an infringement of a copyright reserved by a licensor or assignor.26a Where the wife did not sign the contract and is unwilling to join in the conveyance she may be omitted.27 In a suit to enforce a constructive trust in certificates of the stock of a corporation, neither the corporation nor the former owner of the stock is a necessary party.28 In a suit by the pledgee of corporate bonds to protect the security from waste, seeking a re Evans v. Jackson, 8 Sim. 217; Calvert on Parties, Book III, ch. xvii. 24 Bryan v. Barriger, 251 Fed. 328 25 Pennsylvania & N. J. R. Co. v. Byerson, 36 N. J. Eq. 112, 116. 26 Kelley v. Tracy, 102 Mo. 522; Brown v. Fletcher, C. C. A., 206 Fed. 461. 26a Tully v. Triangle Film Corp., 229 Fed. 297. 27 Dixon v. Anderson, C. C. A., 252 Fed. 694. 28 Brissell 809. v. Knapp, 155 Fed ceivership, the appointment of a new trustee and the termination of the company's business, the pledgor is a proper party.29 Nor need the assignor of the whole interest in a thing in action be made a party to a suit by the assignee; 30 except in the case of a suit by the equitable assignee of a patent,31 or copyright,32 or trade-mark 33 or by the licensee,34 or mortgagor by a mortgage 29 State Nat. Bank v. Syndicate Co., 178 Fed. 359. 30 Harris v. Johnston, 3 Cranch, 311, 2 L. ed. 450; Boon v. Chiles, 8 Pet. 532, 8 L. ed. 1034; Robertson v. Carson, 19 Wall. 94, 22 L. ed. 178; s. c., Chases' Dec. 475; Batesville Institute V. Kauffman, 18 Wall. 151, 21 L. ed. 775; Fulham v. McCarthy, 1 H. L. C. 703. 1 31 Stimpson v. Rogers, 4 Blatchf. 333; North v. Kershaw, 4 Blatchf. 70; Patterson v. Stapler, 7 Fed. 210; Goodyear v. Allen, 3 Fisher, 284. To a suit by the assignee of an applicant for a patent against the applicant and a corporation, to which the patent had been issued, later applicants, who were in interference with the first, are not necessary parties, although they have assigned their applications to the same company and received stock in return. Thompson v. Automatic Fire Protection Co., 197 Fed. 750. For transactions that passed the legal title see Am. Bank Protection Co. v. City Nat. Bank, 181 Fed. 375. For a transaction that did not, see Central Brass & Stamping Co. v. Stuber, C. C. A., 220 Fed. 909. 32 Colburn v. Duncombe, 9 Sim. 151; Chappell v. Purday, 4 Y. & C. 485, Calvert on Parties (2d ed.), 315. 33 A singer, who receives a roy alty on the number of mechanical records of his song that are sold, is not a necessary party to a suit by the patentee and owner of the records for an injunction against the sale of copies made by a reproduction of the same. Fonotipia Limited v. Bradley, 171 Fed. 951. 34 Krauss v. Jos. R. Peebles Sons Co., 58 Fed. 585; Wayman v. Louis Lipp Co., 222 Fed. 679; Southern Machinery Co. v. Fay Stocking Co., 243 Fed. 917. Waterman v. Mackenzie, 138 U. S. 252, 255, 256, 260, 261, 34 L. ed. 923, 925, 926, 927, 928, per Gray, J.: "The patentee or his assigns may, by instrument in writing, assign, grant and convey either, first, the whole patent comprising the exclusive 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; Gaylor v. Wilder, 10 How. 477, 494, 495, 13 L. ed. 504, 511, 512; Moore v. Marsh, 7 Wall. duly recorded at Washington,35 or by an assignee under an 515, 19 L. ed. 37. 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 jus tice, as where the patentee is the infringer, and cannot sue himself." Adriance, P. & Co. v. McCormick H. M. Co., C. C. A., 56 Fed. 918; Littlefield v. Perry, 21 Wall. 205, 22 L. ed. 577. Where the owner of the patent has been enjoined in another jurisdiction from suing alleged infringers of the same, the licensee may sue alone. Hurd V. James Goold Co., 197 Fed. 756. "Any rights of the licensee must be enforced through or in the rame of the owner of the patent, and perhaps, if necessary, to proteet the rights of all parties, joining the licensee with him as a plaintiff. R. S., § 4921; Little. field v. Perry, 21 Wall. 205, 223, 22 L. ed. 577, 579; Paper Bag Cases, 105 U. S. 766-771, 26 L. ed. 959961; Birdsell v. Shaliol, 112 U. S. 485-487, 28 L. ed. 768, 769. 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, be cause the right, although limited to making, using and vending two ma chines, excludes all other persons, even the patentee, from making, using or vending like machines within the district. Wilson V. Rousseau, 4 How. 646, 686," 11 L. ed. 1141, 1159. See D. M. Sechler Carriage Co. v. Deere & Mansur Co., 113 Fed. 285. "Where, however, the patentee reserved the right to use the inventions within the territory, for a specified purpose, and to make them therein for such use and for use outside of the territory, and the licensee agreed not to lease or sell any part of the inventions for use outside of the territory, without the patentee's consent; it was held, that the li censee could not sue in his own name." Bowers Hydraulic Dredg ing Co. v. Vare, 112 Fed. 63. "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 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, 10 How. 477, 13 L. ed. 504. So is a grant of the exclusive right to make and use,' but not to sell, patented machines within a certain district. Mitchell v. Hawley, 16 Wall. 544, 21 L. ed. 322. So is an instrument granting 'the sole right and privilege of manufacturing and assignment still executory,36 or by an assignee, such as a pledgee, whose assignor has an equitable interest in the property; 37 when it is the safer practice to join, as plaintiff 38 or defendant,39 the assignor, licensor, or mortgagee, as the case may be. The exclusive licensee of a patent for a specified territory has the implied 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 licensee, it certainly would not authorize him to use such articles made by others. Hayard v. Andrews, 106 U. S. 672, 27 L. ed. 271. See also Oliver v. Rumford Chem ical Works, 109 U. S. 75, 27 L. ed. 862.' "" It has been held: that an allegation that a patentee assigned to complainant the exclusive right to make, use, and sell for use within the United States and its territories and foreign possessions, "in connection with wireless telephone work and wireless telephonic communication only, apparatus and equipment embodying said methods and apparatus under the patents hereinabove mentioned, or any other patent or patents now or hereafter owned or controlled" by the assignor or his assignee, did not show a conveyance to the assignee of the entire monopoly granted by the government to the patentee, but a mere license; and hence the assignee had no capacity to sue in his own name to restrain infringers. De Forest v. Collins Wireless Telephone Co., 174 Fed. 821. 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 mort gagee 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." An agreement pending an application to assign any patent which may be" granted was held to transfer the legal and equitable title to the patent when issued. Individual Drinking Cup Co. v. Osmun-Cook Co., 220 Fed. 335; Southern Textile Machinery Co. v. Fay Stocking Co., 243 Fed. 917. An applicant for a patent cannot sue for an injunction against an infringement before the patent is issued to him. Standard Scale & Foundry Co. v. McDonald, 127 Fed. 709. 35 Waterman v. Mackenzie, 138 U. S. 252, 34 L. ed. 923. 36 Land Co. of New Mexico v. Elkins, 20 Fed. 545. 37 Hubbard v. Manhattan Trust Co., C. C. A., 87 Fed. 51, 57; Western Nat. Bank v. Armstrong, 152 U. S. 346, 38 L. ed. 470; Ackerson v. Long Branch & L. Co., 28 N. J. Eq. 542; Comptograph Co. v. Universal Accountant Mach. Co., 142 Fed. 539. Contra, Walker on Patents, § 400. 38 Gaumont v. Hatch, 208 Fed. 378. |