STORY, Circuit Justice.
The question, which seems originally to have been one of the main hinges of this controversy, and to which, as a matter of fact, so much of the evidence is addressed, is, whether Byam, at the time of the purchase of the patent right of Phillips, which was subsequent to the license granted by the patentee to Brown, bad notice of the license so granted to Brown. That point becomes wholly immaterial, if the license itself is not by law required to be recorded. And independent of the admission of counsel, I am entirely satisfied, upon the true construction of the patent act of 1836 [5 Stat. 121], c. 357, § 11, that such a license is not required by law to be recorded in the patent office, in order to give it effect and validity. In this view of the matter, I adopt throughout the argument of the learned counsel, who opened the cause for the plaintiff. My reasoning upon the point is briefly this. The license is not per se required to be recorded, unless there be some positive provision of the patent act, which renders it an indispensable prerequisite to its validity and obligation. There is no other act in force, requiring any assignment of any patent right to be recorded, except the act of 183G; and the eleventh section of that act is in these words: ‘‘That every patent shall be assignable in law, either as to the whole interest, or any undivided part thereof, by any instrument in writing; which assignment, and also every grant and conveyance of the exclusive right under any patent to make and use, and grant to others to make and use, the thing patented within and throughout any specified part or portion of the United States, shall be recorded in the patent office within three months from the execution thereof, for which the assignee or grantee shall pay to the commissioner the sum of three dollars." I have already, in other cases, had occasion to decide that the recording within three months is merely directory, and that, except as to intermediate bona fide purchasers, without notice, any subsequent recording of an assignment wifi be sufficient to pass the title to the assignee. Now, as has been Veil, observed by the counsel for the plaintiff, three cases only of the recording of assignments are provided for in the foregoing section; first, an assignment of the whole patent; secondly, an assignment of any undivided part thereof; and, thirdly, a grant or conveyance of the exclusive right under the patent within any specified part or portion of the United States. The present case falls not within either predicament It is not a grant of any exclusive right; but at most the grant of a right or privilege of manufacturing matches under the patent in any place not within forty miles of Methuen, and to vend them in any part of the United States, concurrently with the patentee and any other grantees under him. It is, in no sense, therefore, an exclusive right. It is not an assignment of the patent itself, or of any undivided part thereof, or of any right therein limited to a particular locality. In truth, in propriety of language, it is strictly a license or authority from the patentee to Brown to make and vend the matches, without giving him any exclusive right except as to the matches he shall manufacture, exactly as the sale of a patented machine by the pat-entee would give to the purchaser the right to use the same, without in any maimer restricting the patentee in his right to grant or sell other similar machines to any other persons for use. The language of the instrument of conveyance to Brown by the pat-entee, is that he doth “grant, bargain, sell, convey, assign, and transfer to him, the said Brown, his executors, administrators, and assigns, the right and privilege hereinafter mentioned of making, using, and selling the friction matches” patented, and to have and to hold “the right and privilege of manufacturing the said matches, and to employ in and about the same six persons, and no more, and to vend said matches in any part of the United States.” Then comes the proviso, that nothing herein contained shall prevent or restrict the patentee from “making and vending the same, or of selling and conveying similar rights and privileges to others;” and a further proviso, that “the said Brown shall not manufacture the said matches in any place within forty miles of Me-thuen.” It seems to me, that this language [268] admits of no other rational interpretation, than that, which I have already put upon it. My judgment accordingly is, that no recording of this instrument was necessary to give it complete validity; and therefore the question of notice thereof by Byam, at the time of his purchase, becomes unnecessary to be decided. /
The other question as to the indivisibility ■of the license, granted to Brown, involves considerations of more nicety and difficulty. By the agreement between Brown and Brooks (18th of September, 1837), it was agreed by Brown to sell and convey unto Brooks “a right of manufacturing friction matches according to letters patent, granted to Phillips, &c. in the said town of Ashburn-ham, to the amount of one right, embracing one person only, so denominated, in as full and ample manner to the extension of the said one right as the original patentee;” and Brown further agrees “to go to Ashburn-ham and assist Brooks in learning the art and mystery of manufacturing such friction matches, &c. &c.;” and, also, “not to sell any right of manufacturing said friction matches, or of vending the same to any person living, or intending to live, to manufacture or vend said matches within forty miles of said Ashburnham.” The question, then, is, whether the license or privilege granted by the patentee to Brown is not an entirety, and incapable of being split up into distinct rights, each of which might be assigned to different persons in severalty. I do not meddle with another point, and that is, whether the entirety of the license or privilege to Brown was capable of being assigned, though if it were intended to be a personal privilege or license, it might open a ground for argument, notwithstanding the use of the word “assigns.” That point does not arise in the present case; for here the whole license or privilege is not sold or. assigned; but one right, embracing one person only. It has been well said that the right or license may be transmissible, although not appor-tionable. There is some obscurity in the language of the instrument, which makes it somewhat difficult to give a definite interpretation to it. Brown’s privilege or license is at most to himself and his assigns, and “to employ in and about the manufacturing of the matches six persons, and no more.” Brown agrees to sell to Brooks “one right, embracing one person.” Now, the privilege or license to Brown (assuming it to be capable of assignment) is to him, and to his assigns, to employ six persons. Whoever is employed is to be employed by Brown and his assigns. It would seem to be a reasonable interpretation of this language to say, that all of these persons should be employed by one and the same party, either all by Brown, or all by his assigns. But the sub-agreement with Brooks conveys to him one right in severalty, embracing one person, that is, (as I understand it,) the right to employ one person in the manufacture of the matches. So that if this agreement bp valid, then the original privilege or license, granted by the patentee to Brown, upon this construction, includes six distinct and independent rights, each of which may be granted to a different person in severalty. Now, I must confess, that such a construction is open to all the objections stated at the bar. It exposes the patentee to the competition of six different distinct persons, acting in severalty, and independently of each other. It may make an essential difference to the patentee in his own sales, whether the whole of the right or privilege granted to Brown be in the possession of one, or more persons, having a joint interest, and of several persons, each having a separate and independent interest. The danger too to the paten-tee of an abuse or excess of the right or privilege granted by him is materially enhanced by the circumstance, that each of the sub-holders may be acting at different places at the same time, and the nature and extent of their claim and use of the right or privilege may be difficult for him to ascertain, and leave him without any adequate remedy for any such excess or abuse of it. The language ought, in my judgment, to be exceedingly clear, that should lead a court to construe an instrument of this sort, granting a single right or privilege to a particular person or his assigns, as also granting a right or license to split up the same right into fragments among many persons in severalty, and thus to make it appor-tionable as well as transmissible. The patentee might well agree to convey a single right as an entirety to one person to manufacture the matches and employ a fixed number of persons under him, when he might be wholly opposed to apportioning the same right in severalty among many persons. I observe, that the parties are admitted, both by the evidence and at the bar, to have adopted, and to be willing to abide by, a construction of the grant to Brown, which I confess, I should hardly have arrived at by an examination of the words of the instrument. That construction is, that the grant to Brown, was to manufacture as many matches as six girls could roll up in a day; and that as many other persons might be employed by him ' to prepare. the work, as might be necessary to accomplish this end. See Printed Record, pp. 20, 64, 125. But the employment of six girls by one or more persons holding the entire right, might be very different in the effect upon the value of other rights, grantable by the pat-entee, from what it would or might be, if there were six separate owners, each entitled to employ one girl, with all the proper auxiliaries.
There are many rights and privileges which are grantable, but which, at the same time, are not assignable. And the rules on this head are founded, sometimes upon the con[269] sideration of the nature and objects of the grant, and sometimes upon a supposed personal confidence, and sometimes upon the apparent inconvenience of allowing án assignment. Some of the cases on this subject will be found collected in Com. Dig. “Grant,” D, and “Assignment,” O, 1. Even transmissible rights are not always severable or ap-portionable. Of this, several illustrations may be found in Co. Litt. 164b, 165a, and Com. Dig. “Parcener,” A, 2. But what is more immediately to our present purpose, there are many rights, which, although assignable as an entirety, are not apportiona-ble or divisible by assignment. Thus, for example, it is said in Com. Dig. “Grant,” D, that if A. hold three acres by fealty and rent, and the lord grant the services of one of the acres, it is void; for he cannot make severance of the tenure. And the same doctrine is laid down by Perk. “Grant,” 67, and by Littleton, J., in the Year Book 7 Edw. IV. 25. The like rule is laid down in Com. Dig. “Grant,” D, and in Perk. “Grant,” 68, where three jointments hold, and the lord grants the services of one of them unto a stranger; for the grant is void for the like reason. But the case of Lord Mountjoy, reported in Godb. 17, Moore, 174, and more fully upon the same points in And. 307, approaches by a very near analogy to the present case. There, Lord Mountjoy granted by indenture a certain manor to one Browne in fee, and there was a proviso in the indenture, and a covenant by Browne, that Lord Mount-joy, his heirs, and assigns, might dig for ore in the lands parcel of the manor, and dig turf also, for the purpose of making alum. Lord Mountjoy demised his interest for a term of years to one L., and L. assigned over the same to two other persons; and among other questions, one was, whether Lord Mountjoy could assign over this right, and if the subsequent assignment to the two were good. Godbolt says, that it was decided by the judges, that the assignment to the two was good; but that the two assignees could not work severally, but together with one stock, or. such workmen as belonged to them both. Lord Coke, who was counsel in the case for Lord Mountjoy, and who reported to the privy council, where the question arose, the opinion of the judges, confirms in Co. Litt. 165a, the report of Godbolt, and says, that the judges, among other things, resolved, “That the Lord Mountjoy might assign his whole interest to one, two, or more; but then, if there be two or more, they could make no division of it, but work together with one stock; neither could the Lord Mountjoy, &e. assign his interest in any part of the waste to one or more, for that might work a prejudice and a surcharge to the tenant of the land.” And, therefore, Lord Coke adds, if such an uncertain inheritance de-scendeth to two partners, it cannot be divided between them. It is true (as Mr. Butler in his note, Co. Litt. 165a, note 1, has observed) that Lord Anderson’s report takes no notice of the point of indivisibility, nor is it contained in the certificate, there stated to have been given by the judges. But that is quite consistent with Lord Coke’s account of the matter, which does not merely refer to the certificate, but to the reasoning of the judges; and the point of indivisibility was certainly fairly open before the judges, in considering the subject. Lord Coke, from his position in the case, could scarcely have been mistaken upon so important a point, which went to limit, and not to enlarge, the rights of his client. Now, it seems to me, that, in this aspect, the case of Lord Mount-joy has a very striking, application to the present case. The grant was of a mere right to dig ore, &e.; and yet upon the ground of possible or probable prejudice to the grantor (Browne) of this privilege, it was held to be indivisible. •
A great many cases were cited at the argument by the learned counsel for the plaintiff, turning upon the general doctrine of apportionment, and the analogies furnished' thereby to illustrate the present case. Some of those cases are exceedingly obscure. Others turn altogether upon principles of the feudal law, applicable to rent service, and other kindred tenures, since the statute of quia emp-tores. See Vin. Abr. “Apportionment,” B, § 1; Bac. Abr. “Rent,” M, 1. Others again are eases of very doubtful authority, such as Ards v. Watkin, Cro. Eliz. 637, 651, where the court were at first divided, and Popham, Chief Justice, dissented from the final opinion. And others, again, turn upon apportionments by operation of law, and independent of the acts of the parties. The general rule of the common law is, that contracts are not ap-portionable; and this rule seems ordinarily, although not universally, true, where the apportionment is by the act of the party, and not by mere operation of law; or where the contract is only in part performed, and is not in its own nature and terms severable. See 1 Story, Eq. Jur. §§ 471, 472, 476, 480, 481. The case of Cutter v. Powell, 6 Term R. 320, is directly in point, although I entertain considerable doubt, whether, by the maritime law, the contract in that case was not divisible. In respect to rent, there are doubtless, many cases, where, at the common law, it is apportionable by operation of law, when it could not be by the act of the parties. Co. Litt. 147b-149b; Bac. Abr. “Rent,” M; Wotton v. Shirt, Cro. Eliz. 742; Vin. Abr. “Apportionment,” B. And in some cases I also it may be apportioned even by the act j of the party entitled thereto, as is shown in the cases put in Bac. Abr. “Rent,” M, 1. See, also, Vin. Abr. “Apportionment,” B. But the grounds, upon which this is supported, are not always clearly stated or defined, or made consistent with each other. Thus, it is there said, that if I make a lease of three acres, reserving 3s. rent, as I may dispose of the whole reversion, so I may also of any [270] part of it, since it is a thing in Its own nature severable, and the rent, as incident to the reversion, may be divided too. This is intelligible enough; but then it turns upon the very ground, that a reversion is sever-able; and the very question raised in the case now before the court is, whether this license is so severable or divisible. It is upon the like reaso'n, that the case of Ards v. Watkin, Cro. Eliz. 637, 651, is there attempted to be supported. In Ewer v. Moyle, Id. 771, the court found great difficulty in allowing an apportionment of rent, where there had been a devise, and finally adjudged, “that there should be an apportionment, in regard it was not a division by the act of the party, but by the" law, viz. the statute of wills;” which seems a strange reason for the case, as the devise was clearly the act of the party. In Bac. Abr. “Rent,” M, 1, it is said, that the law allowed of grants of rent-charge, and thereby established such sort of property, and it would be unreasonable and severe to hinder the proprietor to make proper distribution for the promotion of his children, or to provide for the contingencies of. his family, which were in his view. If this be a good reason, it would carry the doctrine of apportionment to a vast many other cases, which it has never been supposed to reach. The case in Hobart’s Rep. 235, where it was adjudged, that where one had a common appurtenant to ten acres of land for all his beasts levant and eouchant on the land, and sold part of it, the common was apportionable, and every one should have common for his beast levant and eouchant upon his part, turned upon the ground that the right of common there was several in its nature, and is not so strict an entirety, as a warranty, a condition, &c., which cannot be divided by the act of the parties, which yet by act of law are divided. The same doctrine was applied in the case cited from Danv. Abr. “Apportionment,” B, 4, and to be found also in Yin. Abr. “Apportionment,” B, § 19, and reported as the case of Morse v. Well, in 1 Brownl. & G. 180, 2 Brownl. & G. 297, and in Morse and Well’s Case, in 13 Coke, 65, upon the ground that the common was severable, and belonged to each portion of the land ratably.
I have dwelt somewhat upon these cases of apportionment, because they were greatly relied upon at the bar in the argument. But I cannot say that they have any very forcible application to the present case, because they are either distinguishable from the present case in their circumstances, or stand upon grounds of reasoning, often obscure, and subtle, and unsatisfactory; or because, admitting their authority, they proceed upon the ground that, in general, apportionment is not allowed in contracts by the mere acts of the party, although it may be by act of law; and therefore they rather stand as exceptions, than as illustrations of a general principle, to be applied by analogy to other cases. The cases of rent service are admitted by the authorities to stand upon a peculiar ground, resulting from the feudal law and feudal tenures, and are unquestionably exceptions to the general doctrine. What I proceed upon is, that every conveyance of this sort must be decided upon its own terms and objects, and that it is very clear that no apportionment or division of the license or privilege can be made, if it is contrary to the true intent and meaning of the parties in the conveyance.
It is said that the present conveyance is the grant of an interest and right and property; and, therefore, it is divisible in its own nature. It is unnecessary to dispute about terms; but if I were called upon to characterize the present grant, I should rather call it an authority, or license, coupled with an interest in its execution. It seems to me, not so much a property or interest in rem, as a right of user for the benefit of the licensee. It is like a right of way granted to a man for him and his domestic servants to pass over the grantor’s lands. Many cases have been put at the argument to sustain the views of the counsel for the plaintiff. But in my judgment, they are all distinguishable from the present case; and perpetually admonish us of the truth of the maxim, “Nullum simile est idem.” This, it is said, that if I buy as many bricks from a kiln as two horses can haul in an ordinary wagon, or as one mason can lay on the wall of my house in a day, it is a valid sale of the quantity of bricks when ascertained. Certainly it is; but then it is a valid sale of the bricks as property, not the sale of the mere privilege to manufacture bricks at my kiln. So, it is asked, if the owner of a brick-yard sells to A. the right of making as many bricks on any land, as six men can strike in a day, whether it may not make a valid sale to a third person of all, that one man can strike? Certainly he may; but then ■ he sells the ascertained quantity of bricks; and not the right to make them. So, in the case at bar, Brown might well sell to any person or persons all or any undivided portion of the matches made by him under his license: but that would be a very different thing from a sale Of a fraction of the privilege to make them. The case of the sale of timber to be cut off lands in Maine,- is of the same nature as those already stated. The sub parties purchase the timber when cut, not the privilege of cutting it. But, suppose the owner grants to A. the privilege of cutting timber off of his land, with the assistance of four men employed by him, can he sell the license arid right of employment to each of four men in severalty for one man’s share? That would be very near the present case. But can we, by any straining, declare that a license to A. to employ his four servants on my land; is a license assignable to B. to employ his four servants? Or if assignable, [271] would A. have a right to assign the right to employ one servant to B., another to C., and another to D. in severalty? Now, that is the very hinge of the case at the bar. It was the very point in Lord Mountjoy’s Case, in Godb. 17. We all know that an authority granted to A. cannot be assigned or executed by B. A fortiori it is not apportion-able, so that a part may be executed by B., and a part by C., and a part by D., and the residue by A.
[NOTE. Por other cases involving this patent, see note to Byam v. Parr, Case No. 2.264. Por argument and decision on the reserved question of costs, see Id. 1,949.]
Upon the whole, I retain the opinion that the license in this case was an entirety, and incapable of division, or of being broken up into fragments in the possession of different persons. The right granted is to the grantee and six persons to be employed by him in malting matches; and if it be assignable, the assignment must be of the entirety of the license to the assignee, and it cannot be apportioned among different persons in severalty. It has been suggested, that, whatever may be the case at law, the plaintiff has an equitable right, which the court ought to enforce. The short answer to this is, that the plaintiff has no equity, as against' Byam and the other defendants, to do an act, for which he had no authority, or to exercise a right never assignable to him. If he has any equity, it is against Brown, and not against the defendants. The bill, therefore, must be dismissed; but the question of costs will be reserved, if the parties desire it