§ 112. Persons who on account of their interest need not be made parties to a suit in equity. No persons should be joined as parties to a suit in equity, either as co-plaintiffs or co-defendants, who are not directly interested in obtaining or resisting the relief prayed for in the bill1 or who claim the property in question under inconsistent titles.2 3 Thus, prior incumbrancers should not be made parties to a bill for the foreclosure of a mortgage, unless it prays for a receiver, or seeks 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," or a guarantor of the mortgage debt 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 § 112. 1 Calvert v. Parties (2d ed.) 6; Mare v. Malachy, 1 M. & C. 559; Seymour v. Farmers' L. & T. Co., C. C. A., 128 Fed. 907. 2 Calvert on Parties (2d ed.), 105; Marquis Cholmondely v. Lord Clinton, 2 Jac. & W. 138 Saumarez v. Saumarez, 4 M. & C. 331; Dial v. Reynolds, 96 U. S. 340, 24 L. ed. 644; infra, § 141. 3 Hagan v. Walker, 14 How. 29, 37, 14 L. ed. 312, 316; Jerome v. MeCarter, 94 U. S. 734, 24 L. ed. 136; Nalle v. Young, 160 U. S. 624, 40 L. ed. 560. 4 Miltenberger v. Logansport Ry. Co., 106 U. S. 286, 306, 27 L. ed. 117, 125.. 5 Hagan v. Walker, 14 How. 29, 14 L. ed. 312; Jerome v. McCarter, 94 U. S. 734, 735, 24 L. ed. 136, 137: McClure v. Adams, 76 Fed. 899. 6 Strong, J., in Jerome v. McCar ter, 94 U. S. 734, 735, 736, 24 L. ed. 136, 137. 7 Kanawha Coal Co. v. Kanawha & O. C. Co., 7 Blatch. 391, 416; Grove v. Grove, 93 Fed. 865. But see Matcalm v. Smith, 6 McLean, 416. As to receivers, infra, § 113. 8 Columbia F. & Trust Co. V. Kentucky U. Ry. Co., 60 Fed. 794. 9 Ayers v. Wisawall, 112 U. S. 187, 28 L. ed. 693. 10 Skinner V. Harker, 23 Colo. 333; s. c., 48 Pac. 648. But see 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 a 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 17 Perkins v. Hendryx, 149 Fed. 526. 18 Title Guaranty & Trust Co. of Scranton, Pa., v. Crane Co., 219 U. S. 24, 55 L. ed. 72. See § 5a supra. 19 Tasker v. Small, 3 M. & C. 63, 68; Calvert on Parties (2d ed.), Book III, ch. xvii. 20 Morgan's Heirs v. Morgan, 2 Wheat. 290, 4 L. ed. 242. 21 Woodward v. Davidson, 150 Fed. 840. 22 Buck v. Buck, 11 Paige (N. Y.), 170. 23 Jones v. Lewis, 1 Cox. Eq. 199; 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. 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 y. Kauffman, 18 Wall. 151, 21 L. ed. 775; Fulham v. McCarthy, 1 H. L. C. 703. 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 nee essary 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. & v. C. 485, Calvert on Parties (24 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. 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. A 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 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. 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 protect the rights of all parties, joining the licensee with him as a plaint ff. 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 richt 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 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," 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 licensee could not sue in his own name. Bowers Hydraulic Dredging 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 |