Joining the owner of Copyright, Patent and Trademark as a co-plaintiff: A comparative




1.1 Definition

In particular cases, the law requires a plaintiff to bring the action also in the name of the absentee, or by joining that person. However, hardship may be caused to the plaintiff who wants to protect his rights when the absentee refuses to join the action and is not subject to the jurisdiction of the court. In such situations, how can a plaintiff protect his rights?



Before answering this question, it is important to explain in which cases this difficulty may arise.



Some cases involve the existence of a certain relationship between the plaintiff and the absentee, such that the absentee must allow the use of his name as plaintiff to enable the extant plaintiff to obtain relief.[1] Courts have found such relationships in a copyright, patent, and trademark cases in which a person other than an owner or assignee such as an exclusive licensee cannot sue in his own right.[2]



There are no Scottish cases which address the question of whether or not the licensee can bring an action against the infringer without joining the owner of the right in the case where the latter refuses to join the action. However, because the same governing Act applies to England and Scotland, we can look at English case law for some guidance as to the rules and principles on this subject. For example, in the leading English case of Heap v. Hartley,[3] the court held that the exclusive licensee was not allowed to sue the infringer in his own name and without joining the owner of the patent, unless the license could be coupled with a grant to vest in the exclusive licensee a title to sue in his own name. In this case, a patentee of machinery had granted to the plaintiff the full and exclusive license to use and exercise the patented invention within a specified district for a limited period. The patentee had covenanted not to sell or to grant any license to exercise or use the invention to any other person in the same district during that period; and in case the patent should be infringed, he covenanted to take all necessary proceedings for defending it, and that in default of his so doing it should be lawful for the plaintiff to take such proceedings in his (the patentee's) name.[4] An action was brought in the County Palatine Court of Lancaster by the plaintiff (exclusive licensee) in his own name, and without joining the patentee, against the defendants. The court by the Vice-Chancellor dismissed the action and held that: “it was doubtful whether an action for infringement of rights under a license could be brought by an exclusive licensee in his own name, without joining the patentee as co-Plaintiff.”[5] The plaintiff appealed alleging that “an exclusive licensee for a particular district, whose license is duly registered, in the position of a person to whom the patentee has given his monopoly and all his beneficial rights […] is practically an assignee pro tanto of the patent, and is entitled to maintain an action for infringement of his rights within the district, in his own name, and without joining the patentee”.[6] The Court of Appeal dismissed the appeal and held that “the exclusive license, being simply an authority to do lawfully that which would otherwise have been unlawful, and not being a license coupled with or equivalent to a grant, did not entitle the licensee to sue in his own name without joining the patentee”.[7] The court reasoned its decision on the ground that there is a difference between licences which amount to a grant and licences which do not do so as follows:[8]



[W]here there is only a license which does not entitle the licensee to take anything away, or to acquire any property, then the license simply remains a license, that is, an authority from the person who grants it to the person who receives it, enabling him to do lawfully that which without the license he could not do; and that where there is a license which not only enables the licensee to do something lawfully which otherwise he could not do, but also enables him to acquire something or to take away something, like game, or ice, in consequence of the license, then the license amounts to a grant.



After explaining this rule, the court applied it to the license involved in this action and held:[9]



That this exclusive license was not intended to be a grant to the licensee of any right to sue is, I think, clear from the fact that there is in it a conditional contract that if there was any infringement either within or without the district, then the patentee would allow the licensee to use his (the patentee's) name, in order to sue the infringer.



Accordingly, it may be concluded that if the terms of a licence do not expressly include a grant of title to the licensee to sue the infringer in his own name, when a licensee wants to bring an action against the infringer, he must join the owner of the right. This is the general rule that shall apply to such circumstances but there are also other situations in which a licensee must join the owner of a right in his action against the infringer. These are: joinder of copyright owner in the case of concurrent rights of action between exclusive licensee and copyright owner under the Copyright, Designs, and Patents Act 1988 Chapter 48; and joinder of the owner of a patent under section 67 of the Patents Act 1977.



The first of these examples is governed by the Copyright, Designs, and Patents Act 1988 Chapter 48 section 102 (1) which provides:[10]



Where an action for infringement of copyright brought by the copyright owner or an exclusive licensee relates (wholly or partly) to an infringement in respect of which they have concurrent rights of action, the copyright owner or, as the case may be, the exclusive licensee may not, without the leave of the court, proceed with the action unless the other is either joined as a plaintiff or added as a defendant.[11]



Accordingly, although a legal exclusive licensee[12] has a right to commence a copyright infringement action in his own name,[13] the matter is different in a case where the owner of a copyright and the exclusive licensee have concurrent rights of action. In this case, and apart from the exception that a court may grant leave, the exclusive licensee is not allowed to sue or to proceed with the action against the infringer, unless he joins the owner of the copyright as a plaintiff or as a defender.[14]



The second example of joinder of the owner of a patent is governed by the Patents Act 1977 Chapter 37.[15] Section 67 of this Act provides as follows:



(1) Subject to the provisions of this section, the holder of an exclusive license under a patent shall have the same right as the proprietor of the patent to bring proceedings in respect of any infringement of the patent committed after the date of the license; and references to the proprietor of the patent in the provisions of this Act relating to infringement shall be construed accordingly. […] (3) In any proceedings taken by an exclusive licensee by virtue of this section the proprietor of the patent shall be made a party to the proceedings, but if made a defendant or defender shall not be liable for any costs or expenses unless he enters an appearance and takes part in the proceedings.[16]



According to the mentioned section, in patent cases the exclusive licensee must join the owner of the patent and the court has no discretion because of the mandatory language of the rule, i.e. “shall be made”.



The Federal rules governing this area are similar to the holding in Heap v. Hartley.[17] For example, in the leading case of Waterman v. Mackenzie,[18] the Supreme Court held that:


The patentee or his assigns[19] may, by instrument in writing, assign, grant, and convey, either (1) the whole patent, comprising the exclusive right to make, use, and vend the invention throughout the United States; or (2) an undivided part or share of that exclusive right; or (3) the exclusive right under the patent within and throughout a specified part of the United States. […] 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.



The Supreme Court in Independent Wireless Tel. Co. v Radio Corp. of America,[20] affirmed the holding of the Supreme Court in Waterman v. Mackenzie:[21]



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. 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.



The court noted that a patent owner who transfers either the whole of the patent right, an undivided part or share of that exclusive right, or all rights in a specified geographical region, gives the assignee a right to bring action for infringement in his own name.[22] However, any less complete transfer of rights amounts to granting of a license rather than assignment, vesting in the licensee no right to sue for infringement in his own name. Instead he must usually join the patent owner in an infringement action brought to protect his rights.[23] This rule has been followed by the Federal courts.[24]



These are just some examples of cases where the law requires a plaintiff to join or bring the action in the name of the absentee. No difficulty arises when the owner of the right agrees to join the action brought by the licensee against the infringer. However, problems do arise when the owner refuses to join the action and is not subject to the jurisdiction of the court. For instance, what is the position in the situations where the law requires that an action shall be brought by joining particular person but that person is both refuses to join the action and, being for example a resident of another country, is not subject to the Scottish jurisdiction? What remedy, then, is available to the licensee?



The following pages examines this question under both Scottish and Federal rules.



1.2 Federal approach



The hardship caused to the licensee who wants to protect his rights where the patentee can not or will not join the action was clarified by the Supreme Court of the United States in Independent Wireless Tel. Co. v Radio Corp. of America [25] as follows: "But suppose the patentee and [the licensee] is hostile and is out of the jurisdiction where suit for infringement must be brought, what remedy is open to the exclusive licensee?". The court answered the above question by holding that “if there was no other way of securing justice to the exclusive licensee, the latter might make the owner who is [not subject to] the jurisdiction of the court a co-plaintiff, without his consent […] in the action against the infringer [because] equity would not suffer a wrong without a remedy”.[26]



The present Federal rule has been enacted in response to the ruling in this case in that it permits the plaintiff in a proper case to require the joinder of a party who must be added as a co-plaintiff if the action is to continue.[27] Federal rule 19(a) provides in the relevant part as follows: “If the person should join as a plaintiff but refuses to do so, the person may be made a defendant, or, in a proper case, an involuntary plaintiff”.[28]



This involuntary plaintiff doctrine means that the involuntary plaintiff will be bound by the judgment even though he has never consented to join the case and was not served with process.[29] Although the rule does not define what the proper case means, the Advisory Committee Note to the original rule held that the case of Independent Wireless Telegraph Company is an example of a proper case.[30] In the light of the Supreme Court’s decision in that case, this doctrine is now applied to actions where:[31] (i) the absentee is not subject to the court's jurisdiction; (ii) the absentee is invited to join the action but he refused; and (iii) the absentee is under a duty to join or allow use of his name. These conditions will now be examined.



(i) The absentee is not subject to the court's jurisdiction



In order to make a patent owner involuntary plaintiff without his consent, he must not be subject to the court’s jurisdiction.[32] Thus, in several cases the lower Federal courts have relied upon the fact that the absentee was subject to the court’s jurisdiction in refusing his joinder as involuntary plaintiff under Federal rule 19(a).[33]



It has been well noted that this condition is necessary. There is no justification for resorting to it when the party is subject to the jurisdiction of the court since in such a case the absentee may simply be served with process and made defendant.[34]



(ii) The absentee was invited to join the action but he refuses



The Supreme Court emphasized this procedural requirement for joinder as involuntary plaintiff in Independent Wireless Tel. Co. v Radio Corp. of America.[35] Here, the court held that the owner may be made a co-plaintiff by the licensee, but not until after he has been requested to become such voluntarily. If he declines to take any part in the case the court added though he knows of its imminent pendency and of his obligation to join, he will be made involuntary plaintiff and will be bound by the decree which follows from the general principles of res judicata. Similarly, in several cases the lower Federal courts have recognized the requirement that the absentee must be invited to join the action, as a condition of a proper case in which, upon his refusal, he may then be made an involuntary plaintiff under rule 19(a).[36]



For example, in First Financial Marketing Services Group, Inc. v Field Promotions, Inc,[37] a plaintiff brought an action for a declaratory judgment that his copyrighted business form did not infringe the defendant’s copyrighted form. The defendant moved to dismiss the action on the ground that the plaintiff, as a mere licensee, did not join the bank who had originated the plaintiff’s form because he was unable to join the action (i.e. jurisdictional limitations).[38] The court noted that the plaintiff could not bring the action without joining the copyright owner. The plaintiff alleged that such a determination left him without a forum for adjudication if he could not persuade the bank to join voluntarily, and could not effect service upon the bank within the judicial district.[39]



The court declined the plaintiff’s allegation and held that the bank could be joined as an involuntary plaintiff under the involuntary plaintiff doctrine. If the owner of a right refuse to join and is “beyond the reach of process he may be made a coplaintiff by the licensee, but not until after he had been requested to become such voluntarily”.[40] Consequently, the court ordered that the action was dismissed unless the plaintiff within 60 days amended his complaint to join the bank as a voluntary plaintiff, or to join the bank as an involuntary plaintiff pursuant to rule 19(a).





(iii) Absentee is under a duty to join or to allow use of his name



Under this condition the involuntary plaintiff doctrine applies only in cases where the existing relationship between the plaintiff and the absentee is such that the absentee must allow the use of his name as plaintiff to enable the extant plaintiff to obtain relief.[41] It has been noted as significant that this procedure is not available merely because one who should be plaintiff is not subject to the jurisdiction of the court, but rather the absentee’s relation to the plaintiff must be such that the absentee is obligated to allow the use of his name to bring the action.[42] Courts have found such relationships in patent and copyright cases in which a person other than an owner or assignee such as an exclusive licensee cannot sue in his own right.[43]



1.3 Scottish approach



Under the two different sets of rules applied in Scotland, there is a real distinction between joinder in copyright cases and joinder in patent cases. In copyright cases, the 1988 Act gives the court discretion to grant a leave to the exclusive licensee to proceed on the action without joining the owner of the right. The court may grant such leave in exceptional circumstances, for example, when the copyright owner is difficult to trace for political reasons.[44] Similarly, the court may also grant such leave, if it finds it fit to do so, where the absentee refuses to join the action. But, in patent cases, the matter is very different. In the Patent Act 1977 there is no similar provision vesting in the court discretionary power to grant leave to the exclusive licensee of a patent to continue in the action without joining the owner of the patent.[45] There is also predictably no rule addressing what should happen in patent cases where the owner of the patent refuses to join the action brought by the exclusive licensee. So, should the same rules applied in copyright cases be followed in patent cases? The main difference between the Federal and Scottish rules in this regard is that Federal rules themselves include a provision to address this difficulty. By contrast, neither Scottish procedural rules nor Scottish case law provide for a situation of an absent patent owner refusing to join an action. Therefore, this question may be open to debate.



It is worth mentioning the significance of introducing to the procedural rules provisions to recognise the fact that the absentee may refuse to join the action where his presence is necessary for determining the real question in controversy. Such a provision would be considered a general principle that would apply to any case falling within the scope of the rule. As such, this general rule would alleviate the limitations imposed by section 102 of the 1988 Act, which applies to copyright cases only.[46] It might be suggested that a provision to such effect should be introduced to avoid possible difficulties and debate.



1.4 Concluding remarks



It has been argued that although the involuntary plaintiff doctrine has been applied only in patent and copyright cases, it may also be used in any proper case where an absent party has a duty to join or to allow the existing plaintiffs to use his name.[47] However, it has been argued that although there are situations appropriate for expansion of the practice, the existing precedents are somewhat disappointing because those courts that employed the doctrine in cases other than in the patent-copyright context generally have done so with little reference to its purpose and proper operation.[48] For example, joinder of an involuntary plaintiff under rule 19(a) was discussed in the wrongful death action of Davila Mendez v Vatican Shrimp Co.[49] In this action, the defendant moved for an order to join an additional plaintiff, the personal representative of another crew member who had been killed on the same voyage as plaintiff's decedent. The court noted that the factual issues to be determined by the present action were whether or not the crewmembers of the vessel lost their lives as a result of any unseaworthy condition of the vessel, or negligence on the part of the owner of the vessel, and that the personal representative of this other crewmember was subject to the rules of service. The court held that the personal representative of the other seaman must join the action as a party plaintiff, and that if he did not do so within 10 days, then the defendant would be allowed to summon him as an involuntary plaintiff. It is obvious that the decision of the Supreme Court refers to the possibility of employing the involuntary plaintiff doctrine, but nothing in the opinion suggests that the principle was actually applied in the case.



On the other hand, the Federal courts have exercised limited use of Rule 19's involuntary plaintiff procedure.[50] But, there is one situation in which the involuntary plaintiff principle has not been applied where there would be merit in doing so.[51] Some district courts have held that a patent owner cannot make a co-owner an involuntary plaintiff,[52] because patent co-owners owe each other no duty, and the right to refuse to become a plaintiff in an infringement action is effectively no different from the unilateral right to license.[53] Thus, courts have found difficulty in justifying the extension of the principle of the involuntary plaintiff doctrine to patent co-owners.[54] However, in a dispute arising out of an application for a patent,[55] the court allowed an applicant to appeal from an adverse Patent Office decision, even though the co-applicant failed to consent. Thus, it is argued that there seems to be no good reason, other than some abstract notion of doctrinal purity, for not extending the involuntary plaintiff rule to cover co-owners of patents in controversies that arise after license has been granted.[56]



Nevertheless, it has been noted that the purpose of this unusual involuntary plaintiff procedure, is to avoid some of the difficulties that may result when joinder of a nonparty is found to be necessary for the adjudication of the pending action but that non-party refuses to join the action.[57] In Independent Wireless Tel. Co. v Radio Corp. of America,[58] the court clarified the underlying policy of this procedure that it protects the interest of the infringer from double action that may be brought against him by a nonjoinder party (i.e. assignor; owner of a right) by settling all the claims in a single action. Additionally, the public interest will be protected in saving the time needed for trying a separate action: [59]



The presence of the owner of the patent as a party is indispensable, not only to give jurisdiction under the patent laws, but also in most cases to enable the alleged infringer to respond in one action to all claims of infringement for his act, and thus either to defeat all claims in the one action, or by satisfying one adverse decree to bar all subsequent actions.[60]



In addition, it has been noted that the scope of this doctrine should be extended to apply in any case where the absentee is a necessary plaintiff, is beyond the personal jurisdiction of the court, and shares a relationship with the existing plaintiff such that it is fair to bind the absentee to the judgment to secure relief for the extant plaintiff.[61][/b]

[b]Cases:



1. Bodley Head Ltd v. Alec Flegon (1972) RPC 587.



2. Cilco, Inc. v. Precision-Cosmet, Inc., 624 F****pp. 49, 52 (D.C.Minn. 1985).



3. Eikel v States Marine Lines, Inc. 473 F2d 959 (5 th Cir. 1973).



4. Ethicon v. United States Surgical Corp., 135 F.3d 1456, 1468 (Fed. Cir. 1998).



5. First Financial Marketing Services Group, Inc. v Field Promotions, Inc,



6. Heap v. Hartley (1889) L.R. 42 Ch.D. 461.



7. Independent Wireless Telegraph Co. v. Radio Corporation of America, 269 U.S. 459 (1926)



Indep. Wireless Tel. Co. v. Radio Corp. of Am., 269 U.S. 459 (1923).



9. Neilson v. Horniman 1909 25 T.L.R. 685.



10. Oren v Red Box Toy Factory Ltd, [1999] F.S.R. 785.



11. Sheldon v. West Bend Equipment Corp., 718 F.2d 603 (3d Cir. 1983).



12. Willingham v. Lawton, 555 F.2d 1340 (6th Cir. 1977).



43 F.R.D 294 (DC Tex. 1966).



138 U.S. 252 (1891).



Acts:



Copyright, Designs, and Patents Act 1988 Chapter 48.



Federal Rules of Civil Procedure 2001.



The Advisory Committee Notes to the Federal rules of Civil Procedure.





[1]] Advisory Committee Notes to the 1937 Rule citing as ''example of a proper case for involuntary plaintiff'' the Independent Wireless case. Moore's Federal Practice–Civil (Matthew Bender & Company, Inc: LexisNexis data**** updated 2003) (Vol. 4, chapter 19. s.4 [b]). See also McDonald & Carlson Texas Civil Practice (Westlaw Data**** updated 2002, (1st. ed.))at s. 5:39

[2] Independent Wireless Tel. Co. v. Radio Corp. of Am., 269 U.S. 459, 469-470 (1926). See also Rydstrom, Jean, “Annotation, What Constitutes "Proper Case" Within Meaning of Provision of Rule 19(a) of Federal Rules of Civil Procedure that When Person Who Should Join as Plaintiff Refuses to Do So, He May Be Made Involuntary Plaintiff "In a Proper Case," (1974) 20 A.L.R. Fed. 193, s. 6. See also Oren v Red Box Toy Factory Ltd, [1999] F.S.R. 785. The Patents Court. Heap v. Hartley (1889) L.R. 42 Ch.D. 461.

[3] (1889) L.R. 42 Ch.D. 461.

[4] Heap v. Hartley (1889) L.R. 42 Ch.D. 461. p: 461-642.

[5] Heap v. Hartley: 462.

[6] Heap v. Hartley (1889) L.R. 42 Ch.D. 461. p: 465.

[7] Heap v. Hartley (1889) L.R. 42 Ch.D. 461. p: 462.

[8]Heap v. Hartley (1889) L.R. 42 Ch.D. 461. p:468.

[9] Heap v. Hartley (1889) L.R. 42 Ch.D. 461. p: 469.

[10]] It is worth noting that this Act applies to Scotland. See s. 304(1) which provides “provision as to the extent of Part I (copyright), Part II (rights in performances) and Part III (design rights) is to be found in sections 157, 207 and 255 respectively”. Thus, section 157 determines the extent of part I of this Act, section 102 in with which we are concerned is within part I, as follows: “[t]his part extends to England and Wales, Scotland and Northern Ireland”.

[11] Emphasis added.

[12] S. 92 (1) of the 1988 Act defines exclusive licence in copyright cases as follows: “a licence in writing signed by or on behalf of the copyright owner authorising the licensee to the exclusion of all other persons, including the person granting the licence, to exercise a right which would otherwise be exercisable exclusively by the copyright owner”.

[13] See Neilson v. Horniman 1909 25 T.L.R. 685. See also Bently, Lionel, and Sherman, Brand, Intellectual Property Law (Oxford University Press, 2001) p: 984. See also Blanco, White, Patents for inventions and the protection of industrial designs (1974, London: Stevens & Sons). p: 406.

[14] Section 102 (1) Copyright, Designs, and Patents Act 1988 Chapter 48.

[15] It is worth noting that this act applies to Scotland. See Allsop, Peter, et al, (eds.) Scottish Current Law Statutes Annotated (London: Sweet Maxwell, Stevens & sons and Edinburgh: W Green & Son). Chapter 37.

[16] Emphasis added.

[17] (1889) L.R. 42 Ch.D. 461.

[18] 138 U.S. 252, 255 (1891).

[19] It may be meant the assignee.

[20] 269 US 459 (1926).

[21]138 U.S. 252 (1891).

[22] Moore's Federal Practice–Civil (Matthew Bender & Company, Inc: LexisNexis data**** updated 2003) (Vol. 4, chapter 17. s. 17. 11[4,c]).

[23] Moore's Federal Practice–Civil (Matthew Bender & Company, Inc: LexisNexis data**** updated 2003) (Vol. 4, chapter 17. s. 17. 11[4,c]).

[24] Cahaly, Richard, “At each other’s mercy: do courts fairly apply rule 19 of the Federal rules of civil procedure to protect patent co-owner’s property rights?” (2001) 35 Suffolk University Law Review 671. p: 671. See for example, Indep. Wireless Tel. Co. v. Radio Corp. of Am., 269 U.S. 459, 470 (1923). Willingham v. Lawton, 555 F.2d 1340, 1344 (6th Cir. 1977).

[25] 269 U.S. 459(1926).

[26] Rydstrom, Jean, “Annotation, What Constitutes "Proper Case" Within Meaning of Provision of Rule 19(a) of Federal Rules of Civil Procedure that When Person Who Should Join as Plaintiff Refuses to Do So, He May Be Made Involuntary Plaintiff "In a Proper Case," (1974) 20 A.L.R. Fed. 193, s. 3(a) and s. 8.

[27] Wright, Charles Alan, Miller, Arthur R. et al., Federal Practice & Procedure (2001, Westlaw data**** updated 2003) (vol. 7. Chapter 5. s. 1606)

[28] Emphasis added.

[29] Moore's Federal Practice–Civil (Matthew Bender & Company, Inc: LexisNexis data**** updated 2003) (Vol. 4, chapter 19. s. 19.4 [4, b]).

[30] See the Advisory Committee Note to Rule 19, which is set out in vol. 12A.

[31] 18 Am. Jur. 2d Copyright and Literary Property s. 194. (Data**** updated 2002). See also Sheldon v. West Bend Equipment Corp., 718 F.2d 603 (3d Cir. 1983).

[32] Independent Wireless Telegraph Co. v. Radio Corporation of America, 269 U.S. 459 (1926); See also Eikel v States Marine Lines, Inc. 473 F2d 959 (5 th Cir. 1973).

[33] Rydstrom, Jean, “Annotation, What Constitutes "Proper Case" Within Meaning of Provision of Rule 19(a) of Federal Rules of Civil Procedure that When Person Who Should Join as Plaintiff Refuses to Do So, He May Be Made Involuntary Plaintiff "In a Proper Case," 20 A.L.R. Fed. 193, s. 5.

[34] Wright, Charles Alan, Miller, Arthur R. et al., Federal Practice & Procedure (2001, Westlaw data**** updated 2003) (vol. 7. Chapter 5. s. 1606)

[35] 269 U.S. 459 (1926).

[36] Rydstrom, Jean, “Annotation, What Constitutes "Proper Case" Within Meaning of Provision of Rule 19(a) of Federal Rules of Civil Procedure that When Person Who Should Join as Plaintiff Refuses to Do So, He May Be Made Involuntary Plaintiff "In a Proper Case," (1974) 20 A.L.R. Fed. 193, s. 7.

[37] 286 F Supp 295 (D.C N.Y. 1968)

[38] Indispensable party is a person who must join the action but it could not make him a party due to service of process, venue, and jurisdictional problems. Wright, Charles Alan, Miller, Arthur R. et al., Federal Practice & Procedure (2001, Westlaw data**** updated 2003) (vol. 7. Chapter 5. s. 1607). See also Federal rule 12 (7) which provides for a defence of “failure to join a party under Rule 19”.

[39] First Financial Marketing Services Group, Inc. v Field Promotions, Inc, 286 F Supp 295, 299 (D.C N.Y. 1968).

[40]First Financial Marketing Services Group, Inc. v Field Promotions, Inc, 286 F Supp 295, 299 (D.C N.Y. 1968) Emphasis added.

[41] Advisory Committee Notes to the 1937 Rule citing as'example of a proper case for involuntary plaintiff the Independent Wireless case. Moore's Federal Practice–Civil (Matthew Bender & Company, Inc: LexisNexis data**** updated 2003) (Vol. 4, chapter 19. s. 4[b])

[42] McDonald & Carlson Texas Civil Practice (Westlaw data**** updated 2002, (1st. ed.))at s. 5:39

[43] Independent Wireless Tel. Co. v. Radio Corp. of Am., 269 U.S. 459, 469-470 (1926). See also Rydstrom, Jean, “Annotation, What Constitutes "Proper Case" Within Meaning of Provision of Rule 19(a) of Federal Rules of Civil Procedure that When Person Who Should Join as Plaintiff Refuses to Do So, He May Be Made Involuntary Plaintiff "In a Proper Case," (1974) 20 A.L.R. Fed. 193, s. 6.

[44] Bodley Head Ltd v. Alec Flegon (1972) RPC 587. See also Laddie, Hugh, et al, The modern law of Copyright and Designs (1995, London: Butterworths). p: 906.

[45] See Patents Act 1977 Chapter 37, Section 67.

[46] The Federal approach is similar to the trend of the English Rules of the Supreme Court order 15, r. 4 (2) in which it recognise a case where the absentee may not consent to join the action. The court according to this rule has discretion to grant an appropriate leave in the issue of joinder of parties. See this rule in Jacob, I., (ed.) et al, The Supreme Court Practice (1982. London: Sweet & Maxwell. Stevens & Sons LTD.). Vol 1. Part 1

[47] 25 Fed. Proc., L. Ed. s. 59:108. (Westlaw data**** updated 2003)

[48] Wright, Charles Alan, Miller, Arthur R. et al., Federal Practice & Procedure (2001, Westlaw data**** updated 2003) (vol. 7. Chapter 5. s. 1606).

[49] 43 F.R.D 294 (DC Tex. 1966). See also Rydstrom, Jean, “Annotation, What Constitutes "Proper Case" Within Meaning of Provision of Rule 19(a) of Federal Rules of Civil Procedure that When Person Who Should Join as Plaintiff Refuses to Do So, He May Be Made Involuntary Plaintiff "In a Proper Case," (1974) 20 A.L.R. Fed. 193, s. 8. in addition, it has been note that some courts have allowed defendants to invoke the device under circumstances that appear to be little more than pretrial maneuvering designed to avoid being aligned on the same side of the case as an insurance company. See these examples in Wright, Charles Alan, Miller, Arthur R. et al., Federal Practice & Procedure (2001, Westlaw data**** updated 2003) (vol. 7. Chapter 5. s. 1606)

[50] Cahaly, Richard, “At each other’s mercy: do courts fairly apply rule 19 of the Federal rules of civil procedure to protect patent co-owner’s property rights?” (2001) 35 Suffolk University Law Review 671. p: 680.

[51] Wright, Charles Alan, Miller, Arthur R. et al., Federal Practice & Procedure (2001, Westlaw data**** updated 2003) (vol. 7. Chapter 5. s. 1606).

[52] Cilco, Inc. v. Precision-Cosmet, Inc., 624 F****pp. 49, 52 (D.C.Minn. 1985). Citing Wright & Miller.

[53] Ethicon v. United States Surgical Corp., 135 F.3d 1456, 1468 (Fed. Cir. 1998).

[54] Ethicon v. United States Surgical Corp., 135 F.3d 1456, 1468 (Fed. Cir. 1998). See also Cahaly, Richard, “At each other’s mercy: do courts fairly apply rule 19 of the Federal rules of civil procedure to protect patent co-owner’s property rights?” (2001) 35 Suffolk University Law Review 671. p: 684.

[55] Wright, Charles Alan, Miller, Arthur R. et al., Federal Practice & Procedure (2001, Westlaw data**** updated 2003) (vol. 7. Chapter 5. s. 1606).

[56] Wright, Charles Alan, Miller, Arthur R. et al., Federal Practice & Procedure (2001, Westlaw data**** updated 2003) (vol. 7. Chapter 5. s. 1606).

[57] Wright, Charles Alan, Miller, Arthur R. et al., Federal Practice & Procedure (2001, Westlaw data**** updated 2003) (vol. 7. Chapter 5. s. 1606).

[58]269 U.S. 459 (1926).

[59]Independent Wireless Tel. Co. v Radio Corp. of America 269 U.S. 459, 468 (1926).

[60] Emphasis added.

[61] Moore's Federal Practice–Civil (Matthew Bender & Company, Inc: LexisNexis data**** updated 2003) (Vol. 4, chapter 19. s. 4).


Written By/ Prof. Dr. kamal al-alaween