8 F. 452 | U.S. Circuit Court for the District of Western Pennsylvania | 1881
On July 19, 1876, Albert Ball and the defendant entered into a written agreement, by the terms of which the defendant was to manufacture a plow known as the “Bed Jacket Plow,” under two patents of the United States which had been issued to Ball, and pay Ball on each plow made by the defendant, and “sold and collected for,” a royalty of 50 cents, to be settled and paid in the months of January and July of each year; and the defendant was further to pay Ball a commission of 5 per cent, on net collections upon sales of plows made by Ball or his agents, in whatever territory he might work up, but he to pay the traveling expenses of himself and his agents, and the defendant to supply printed matter; the defendant to meet the demand from responsible parties for plows, on reasonable notice; the agreement to continue during the term of the patents, which bear date respectively, January 3, 1871, and January 4, 1876.
On January 13, 1877, by a written instrument of that date, Albert Ball assigned to John Ball & Co. “all royalty or patent fees due or to become due” to him under the above-recited agreement, this assignment to be for the term of four years from this date;” and by an instrument of writing, of the same date, he assigned all his interest in said two patents to said John Ball & Co., “subject to a contract this day executed by and between said John Ball & Co. and myself,” (Albert Ball.) By this latter contract John Ball & Co. sold their manufacturing establishment to Albert Ball for the consideration of $18,000; and the contract provided, inter alia, for an assignment to John Ball & Co. of the aforesaid royalty on the Bed Jacket plow, and of said patents, “said assignment of said patents and royalty and license fees to be for a period of four years; ” and the contract contains the further provision that if the purchase money, with interest, is not fully paid “at the end of four years, said Ball is to
On the fifteenth of February, 1878, John Ball & Co. assigned all their interest and claim in said patents, and in the aforesaid agreement between Albert Ball and the defendant, to George Cook and Jacob Miller.
On the nineteenth of November, 1878, Cook and Miller served a written notice upon the defendant, in which, after reciting that he had failed to comply with the “conditions of said license” to manufacture plows under said patent, “in not paying the royalties as provided by said license, there being now due and unpaid to us a large sum as royalty on said license, in which sum or amount you are now in default, and having also broken and failed to comply with other terms of said license,” they notified the defendant that they terminated and annulled his license. They subsequently filed the bill in this case, in which they pray that the defendant’s license may be decreed to be forfeited, that he may be enjoined from manufacturing plows under said patents, and that he may be required to account for and pay the plaintiffs’ all royalties for which he may ,be in arrear, and damages.
The notice of November 19, 1878, assumed, and the bill assumes, that the agreement between Albert Ball and the defendant contains conditions for the breach of which by the defendant his license to manufacture is revocable; but the agreement contains nothing of the kind. There is no provision therein for revocation or forfeiture, and therefore there is no foundation for a decree annulling the license, (McKnight v. Krentz, 51 Fa. St. 232;) certainly none under the evidence. But, were it otherwise, such decree would not be made upon this bill, for Albert Ball, whose rights are involved, is not a party to the suit. Gloninger v. Hazard, 42 Pa. St. 389. That he has an interest in the question of annulling the defendant’s license is manifest. His assignments of the patents, and of the royalties payable by the defendant, are not absolute, but merely as collateral security for a debt due by him to John Ball & Co., and they are expressly limited-in their operation to the term'of four years. Furthermore, an important part of the agreement between Albert Ball and the defendant, to-wit, that relating to Ball’s commissions upon sales, was not touched by the assignments. Now, clearly, a decree annulling the
It only remains to be considered whether the complainants are entitled to relief under their prayer for an account, and, if so, upon what principles such account is to be taken. Albert Ball testifies that he visited' the defendant’s office on the seventeenth of January, 1877. He says:
“ I handed him a notice, from John Ball & Co., of the transfer of my rights and royalties that had become due under my contract with Mr. Bidwell, and, I think, in connection with that, a letter stating they had withdrawn a certain circular they had issued.”
On January 27, 1877, John Ball & Co. addressed the defendant a letter, in which they say:
“You are hereby notified that Albert Ball has assigned to us all royalty or patent fees which are due, or to become due, under provisions of contract between you and him dated July 19, 1876, and that we shall look to you for payment of same to ns.”
To this notification the defendant replied, by letter dated January 80, 1877, in which he says:
“ I take note of your notice that Albert Ball has assigned to you the royalty which may become due to him under my contract with him dated July 19,1876, and in reply thereto have to state that the amount, in round figures equal to about $1,500, has already been advanced to Mr. Albert Ball, upon the royalty and commissions for selling. As I cannot know at this date how much of the amount will he applicable to commissions, I could not determine how much of it would go off the royalty. Any balance, however, which may he due upon the same, it will be equally agreeable to me to pay you at the proper time.”
Under date of February 6, 1877, John Ball & Co. wrote to the defendant:
“We cannot consent that any amounts advanced to Mr. Ball after the seventeenth instant should he included in the amount held subject to royalty, as you had notice through him of the transfer to us; and amounts advanced after such notice were so done at your own risk of being taken up by commissions or otherwise by Mr. Ball.”
It appears, as I understand the evidence, that on January 18, 1877, the defendant made an advance to Albert Ball of $546.40, which afterwards was reduced to $464.20. This advance the evidence shows was in accordance- with previous dealings between Ball and the defendant under their agreement, and nothing in the evidence relating to the transaction indicates any intentional bad faith to John Ball & Co. Is, then, the position taken by them and by the
“A creditor shall not be permitted to split up a single cause of action into many actions without the assent of his debtor, since it may subject him to many embarassments and responsibilities not contemplated in his original eon- ' tract. He has the right to stand upon the singleness of his original contract, , and to decline any legal or equitable assignments by which it may be broken . into fragments.”
It will not do to say that Ball’s royalties and commissions are distinct and separable claims. They both arise under one contract, grow out of the same enterprise, are closely connected, and properly the subject of one account. It seems to me that it is only by virtue of the defendant’s assent to the assignment to John Ball & Co., given in his letter of January 30, 1877, and his subsequent recognition of the plaintiffs’ rights upon the basis of that letter, that the plaintiffs can maintain this bill. In all cases where the assignment does not pass the legal title, and is not absolute and unconditional, or there are ¡remaining rights or liberties of the assignor which may be affected by the decree, he is a necessary party. 1 Dan. Ch. 192; Story’s Eq. Pl. § 153. Now, the assignment not having been absolute, and but partial, Albert Ball would be a necessary party, save for the defendant’s assent; and as the plaintiffs must rely upon the defendant’s assent in order to maintain this bill, they must take it with its qualification.
