
    Electrical Accessaries Company, Respondent, v. Samuel S. Mittenthal, Appellant, Impleaded with Isaac M. Mittenthal and Others, Defendants.
    First Department,
    November 3, 1911.
    Contract — assignment — assignment of patent — royalty — pleading— relief beyond that demanded in complaint — trial — sufficient exception— appeal — changing theory of case — judgment — joint liability —right of one judgment debtor to appeal — notice of appeal — service on codefendant.
    Where part of the consideration for the assignment of a patent to the defendants was to be paid in royalties consisting of five per cent of the gross sales of the patented device made by them or their assigns, they are liable for this percentage of the gross sales made by a company incorporated by them one month after the assignment of the patent and to which they had transferred their rights thereunder. *
    The plaintiff is not limited to a recovery of five per cent of the gross sales of the patented article actually manufactured and sold by defendants personally.
    Where the original , complaint limited its [demand to royalties on gross sales up to the commencement of, the action, plaintiff cannot, over proper objection and exception, recover for royalties on sales made up to the time of the trial.
    Where, over defendants objection that it was not within the issues, evidence as to, the amount of sales between the commencement of the action and the time of the trial was received and an exception, duly taken, the defendants’ rights were. preserved, although they did not object to the granting of plaintiff’s motion to amend the complaint made at the close of his case.
    Nor can plaintiff sustain a judgment for royalties on sales intermediate the commencement of the action and the trial on the ground that one of the defendants in his answer claimed that the contract had been abrogated and thus entitled plaintiff to recover as for a total breach, where no such theory was presented on the trial.'
    It was not necessary for both defendants to appeal from the judgment, although it was rendered against them on a joint liability.
    
      It seems, that one defendant held jointly liable with another cannot by appeal, without the other joining therein or without serving his notice of appeal on him, obtain relief which will affect the other defendant prejudicially.
    The fact that the notice of appeal describes the judgment as against appellant instead of against both defendants does not preclude him from obtaining a modification of the judgment not prejudicial to his codefendant.
    
      Appeal by the defendant, Samuel S. Mittenthal, from a judgment of the Supreme Court in favor of the plaintiff, entered in the office of the clerk of the county of New York on the 14th day of March, 1911, upon the verdict of a jury rendered by direction of the court. ■
    
      Edward Potter, for the appellant.
    
      Justin S. Galland, for the respondent.
   Laughlin, J.:

The plaintiff was the owner of certain letters patent issued by the United States Patent Office for the improvement of electrical fountains, and it sold and assigned the same to the defendants. The consideration was paid in part in cash and the defendants agreed to pay the balance in royalties, consisting of five per cent on the gross sales of the electrical fountains made by the defendants or their assigns, until the indebtedness was paid.

The defendants did not manufacture or sell any of the electrical fountains, and the appellant contends, on the opinion delivered by the Court of' Appeals on a former appeal herein from an order striking out the appellant’s answer as frivolous (Electrical Accessories Co. v. Mittenthal, 194 N. Y. 473), that the plaintiff. can only recover herein for electrical fountains actually manufactured and sold by the defendants. The question presented by that appeal was merely whether the answer contained a denial of any of the material allegations of the complaint, and the question as to whether the defendants would be liable for royalties on electrical fountains manufactured and sold by others by their authority, or with their consent, was-not presented for decision. It appears that within about one month after the sale and assignment of the letters patent to the defendants, they incorporated the New York Electric Fountain Company, for the purpose of manufacturing and selling the electrical fountains, and that they assigned their rights to that company. The basis of the recovery is a percentage on the gross sales of the electrical fountains thus manufactured and sold by the New York Electric Fountain Company, and we are of opinion that the defendants were properly held liable therefor. . •

The plaintiff’s demand in the original complaint was limited to royaltiés on gross sales down to the time of the commencement of the action; but it claimed the right to recover for royalties down to the time of the trial; and over the objection and exception duly taken of the appellant, that the evidence was not within the issues, and that the plaintiff was limited to the royalties earned before the action was commenced, the court permitted the plaintiff to show the amount of the sales intermediate the commencement of the action and the trial. At the close of the plaintiff’s case it moved to amend the complaint to include these royalties and the motion was granted.- No exception appears to have been taken, but the rights of -appellant are preserved by the exception to the reception of. the evidence. The defendant Jacobson pleaded as a defense the assignment to the New York Electric Fountain Company, and that this was made with the knowledge and consent of the plaintiff, and on the understanding and agreement that the defendants were to be released, and that the plaintiff was to look to said assignee for the balance of the consideration agreed to be paid by defendants to plaintiff under the assignment of the letters patent to them; but these facts were not set up in the answer of the appellant. On account of this contention made by the defendant Jacobson the plaintiff now claims that it was entitled to recover as for a total breach of the contract, and that these royaltiés constitute its damages; but it does not appear that this theory was presented on the trial.

This action is at law, and the only breach shown on the part of the defendants prior to the commencement of the action was a failure to pay the royalties on gross sales down to that time. There was no allegation or proof of a total repudiation by defendants of their liability under their contract with plaintiff. The plaintiff was pennitted to recover the sum- of $422.75 for royalties on sales after-the commencement of the action. This should, therefore, be deducted from the amount of the recovery.

The respondent also contends that the judgment was rendered against the defendants on a joint liability, and that it was, therefore, not competent for one of the defendants tó appeal alone. This contention is not sound. It may be that one defendant, who has been held jointly liable with another, cannot by appeal, without the other joining therein, or without serving his notice of appeal upon him, obtain relief which will affect the other defendant prejudicially; but here the only relief to which we think the appellant is entitled is merely a- modification of the judgment by reducing the amount thereof, and of this the other defendant could not complain.

The notice of appeal describes the judgment as being against appellant instead of against both defendants. We are of opinion that this does not preclude appellant from' obtaining a modification of the judgment.

■ The Court-of Appeals in St. John v. Andrews Institute (192 N. Y. 382) recognizes, I think, the right of one defendant against whom a recovery has been had on a joint liability to appeal without his codefendant or defendants joining with him. In Williams v. Western Union Tel. Co. (93 N. Y. 162, 193) it was stated that one defendant alone might not have the right to appeal in such case, but the point was not decided. The Code of Civil Procedure (§§ 1294, 1295, 1300) authorizes any party aggrieved to appeal. The fact that no provision is made for serving the notice of appeal on a codefendant is not decisive of the question. The appellant could, not compel his codefendant to appeal, and I am of opinion that he is not bound' to submit to an unwarranted recovery if his codefendant fails to join with him. If he may appeal, it follows that he may have the right to relief, but the extent of the relief may-'depend on whether or not the notice of appeal has been served on his codefendant or defendants, a question which we do not now decide. ‘ .

It follows, therefore, that the judgment should be reversed and a new trial ordered, unless plaintiff shall stipulate to reduce the recovery by the sum of $422.15; in which event the judgment as so modified is affirmed, without costs.

Ingraham, P. J., Scott, Miller and Dowling, JJ., concurred.

Judgment reversed and new trial ordered, unless plaintiff stipulate to reduce the recovery by the sum of $422.15; in which event judgment as so modified, affirmed, without costs. Order to be settled on notice. - 1 .  