VAN ORDEN II. KAYOR, ETC., 01' NASHVILLE.

331

be, and were sold 8.8, "Fibre Chamois;" so that here, as may be said also of the case cited, there was a sort of constructive application by defendants of complainant's trade name, or mark, to the goods of another manufacturer. It is argued that the words "Fibre Chamois" are descriptive of the manufactured article, and also that they contain the false representation that said article is chamois leather. Said combined words would not be spontaneously used as descriptive of chamois leather, or of any fabric having the appearance of chamois leather; bUt, the association of ideas whereby a manufacturer might select and combine these words to mark and distinguish, as made by himself, a fabric having an appearance somewhat similar to parchment, or chamois leather, and useful as an interlining for clothing, can be understood. Many artificial words, or combinations of words, coined or used as trade-marks or trade-names, are suggestive in this way. Assumiug that worda in a sense descriptive of an article of merchandise may not also, in a given case, have a secondary significance, as marking the origin or manufacture of such article, the words "Fibre Chamois," combined as here, I should say, need not be disallowed as a trademark or trade-name. If said words, as here combined, have any sense, as descriptive of the class of goods in question, it is not so pronounced, obvious, and usual as to mltke said combined words unfit, inappropriate, or misleading, as a name, sign, or mark of origin for complainant's goods, nor will such secondary import interfere with or abridge the use of said words, or either of them, by any person, in any possible way, except as a mark of origin for similar goods. The showing here seems to be that said combined words do in fact have a significance as an arbitrary mark and name whereby the goods made by this complainant are identified and distinguished in the trade as carried on, even in defendants' store, and within the understanding of defendants' employ6s, from like goods of other makers marked as already mentioned. The firm of De Lee & Dernberg, it is said, has become incorporated, presumptively, since the bill was filed. Dernberg is shown to be at present an active manager of the business, and it does not appear that De Lee has parted with his interest and control. A preliminary injunction will issue as prayed, upon bond as usual in such cases.
VAN ORDEN v. MAYOR, ETC., OF NASHVILLE. BRICKILL et a!. v. SAME. (Cirouit Court, M. D. Tennessee. May', 1895.) Nos. 2,862, 2,859.
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PARTIEll TO PATENT SUITll-ACTIONS AT LAW.

I.

A part owner of a patent cannot maintain alone an aotion at law for Infringement, but must join all the co-owners, so as to have the entire legal title represented; for only one suit can be maintained for the same infringement. Nor can a part owner, in such action, make his co-owners parties defendant on the ground that they have refused to join as plaintiffs.

BAKE-PLEADING-DEMURRER.

The nonjoinder as parties plaintiff of all the part owners of a patent may be taken advantage of by demurrer when the defect appears on the face of the declaration.

These were act10DS at law, brought, respectively, by Edward Van Orden and Wlll1am A.. Brlck1ll, against the mayor and city council ot Nashvllle, to re-

J'EDERAL REPORTER,

vol. 67.

eover damages tor the Intrlngement of letters patent No. 81,182, llsuecl to ..td Brlckfil, August 8, 1868, for an Improvement in feed-water heaters for steam are engines. The cases were heard upon demurrer to the declaration becauBe of nonjoinder of parties plaintiff. J. W. Gaines and Everett McKlns, for Van Orden. Raphael J. MOBes, Jamee A. HUdson, and J. W. Bonner, tor Brlcklll et al Frank Slemmons, Olaude Waller, and Lellyett & Barr, for mayor and city councll of Nashv1lle. OLARK, District Judge. These are action. at law brought tor alleged infringement of patent. In the flrst case Van Orden sues as the assignee of an undivided fourth Interest In the invention., and makes the city of Nashv1lle, with Brickill, the patentee, and others, defendants, it being averred that Bricklll still owns a one-fourth share ot the patent, and the other defendants (except the city) the remaining halt thereot. The Infringement alleged and damages claimed are against the ctty only, and the reason stated for making the owners of the other undivided parts defendants, instead ot joining them as coplalntifrs, is that they "have declined to join with the plaintiff." In the second case Brick1ll and those made defendants with him in the flrst case, as owning three-fourths of the patent right, sue the city and Van Orden, stating that Van Orden declines to join with them as a plaintiff In this suit. This condition ot things stands without explanation, further than that they decline to join In one suit. The demurrer in each case raises the question whether a party owning less than the whole interest can maintain an action at law for infringement without joining the other co-owners as plalntitfs. It is quite apparent that, it each part owner may sue separately, as many as four suits might have been brought upon the facts in these cases, and the number that might be maintained against a single defendant for an infringement in any case would be limited only by the parts into which the patent right may have been divided and llubdtvided. It is not to be suppol!led that a rule 80 contrary to all analogy exIsts, unless there Is something peculiar to thls class ot cases. In Gayler T. Wllder, 10 How. 493, Chief Justice Taney, speakIng of the nature ot a patent right, said: "Now, the monopoly granted to the patentee Is for one entire thing. It is the exclusive right of making, using, and vending to others to be used, the Improvement he has Invented, and for which the patent is granted. The monopoly did not exist at common law, and the rights, therefore, which may be exercised under it, cannot be regulated by the rules of the common law. It is created. by the act of congress; and no rights can be acquired in it unless authorized by statute, and in the manner the statute prescribes." And, referring to assignments of sectional or part interests, and their etfect, It was observed: "For it was, obviously, not the Intention of the legIslature to permit several monopolies to be made out of one and dIvided among different persons within the same limits. Such a division would inevitably lead to fraudulent impositions upon persons who desired to purchase the use of the improvement, and would subject a party who, under a mistake as to his rigllts, used the invention without authority, to be harassed by a multiplicity of suits, instead of one, and to successive recoveries of damages by different persons holding ditferent portions ot the patent right In the same place." Whatever may be the rule elsewhere, and in respect to other rights, I think it is settled that in an action at law for intrlngement In the courts of the United States a part owner cannot sue alone, but must join all the co-owners, so &s to have the entire legal title represented by the plaintitf or plaintiffs, and that but one suit can be maintained for the same infringement. Blanchard

BEARPIELD II. BRIDGE.

us

v. Eldridge, 1 Wall. Jr. 387, Fed. Cu. No. 1,510; Gayler T. Wilder, supra; Waterman T. Mackenzie, 138 U. 8. 255, 11 Sup. Ot. 834; Moore T. Marsh, 7 Wall. 5115; Curt. Pat. §§ 344, 847. In Waterman T. Mackenzie, Mr. Justice Gray, gfTing the opfnfon of the court, said: "The patentee or his assigns may, by Instrument in writing, aMign, grant, and convey either (1) the whole pat· ent, comprising the exclusive right to make, use, and Tend the Invention throughout the United States; or (2) an undivided part or share of that exclusive right; or (8) the excluBive right, under the patent, within and throughout a specified part of the United States. Rev. St. § 4898. A transfer of either of these three kinds of Interests II an assignment, properly speaking, and vests in the assignee & title In so much of the patent itself, with & right to sue Infringers,-In the second. case, jointly with the assignor; in the first and third cases, In the name of the aBslgnee alone." A transfer of the second kind is the one which the court is bere dealing with, and Waterman v. Mackenzie wu approved and followed in P.ope Manuf'g Co. v. Gormully &; Jeffery Manuf'g Co., 144 U. S. 251, 12 Sup. Ct. 641. This point wu made and sustained by the court below in Campbell v. Haverhill, 155 U. S. 610, 15 Sup. Ct. 217, but the supreme court of the United States held that the objection had been waived, and that court, on the merits, decided for the first time that ilie statute of limitations of the several states applies to actions at law for tbe infringement of letters patent. In an action at law, in any character of cue, that a joint owner of a right or fund can sue his co-owners as defendants, instead of joining them as plaintiffs, as is here done, I am not by any means prepared to admit. And the objection of nonjoinder may be taken advantage of by demurrer where the defect appears on the face of the declaration. Farni T. TeBBOD, 1 Black, 809. For the reasons indicated, the first cause assigned in the original demurrer is sustained, and both suitll dismissed, with
eosta.

HEARFIELD

T.

BRIDGE et aL

(Circuit Court, N. D. Callfornia. AprU 8, 1895.) No. 11,662.

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EXECUTOltB AND AmnNISTRATORS-FoRECLOSURE OJ./' MORTGAGEII-PARTIEL

Under the Callfornla statute which authorized actions founded on contracts to be maintained against executors and administrators where such actions could have been maintained against their decedents, the widow and heirs of a deceased mortgagor were not necessary parties to an action against his administrator to foreclose the mortgage. Bayly v. Muehe, 3 Pac. 467, 4 Pac. 486, and 65 Cal 845, followed. Though the federal courts may not be bound by a state law authorIzing an action to foreclose a mortgage to be maintained against the administrator of a deceased mortgagor without joining his widow and heirs, they will not, in an action to qutet title, overturn a title acquired under a foreclosure In the state courts, to which the widow and heirs were not parties· Though, under the California statute which authorized actions founded on contracts to be maintained against executors and administrators where such actions could have been maintained against their decedents, the widow and heirs of a deceased mortgagor were not necAiisary parties to an action against his administrator to foreclose a mortgage on community property, they were not deprived of their property without due process of law.

I.

COURTS-FOLLOWING STATE PRACTICE-QUIETING TITLE.

.. CONSTITUTIONAL LAw-Dim PROCEss 01' LAW-FORECLOSURE 01' MORTGAGES OJ./' DECEDENTS.