as to the proper application of these moneys that the assailants or the union which they represented may have been induced to make the payments in the expectation of thereby avoiding punishment of the assailants by imprisonment. The payments were required by the court to be made in recognition of an obligation both legal and moral on the part of the assailants to compensate the claimant in part at least for the loss of earning power on account of such injuries, and to be made weekly as his wages were paid, and to be continued until he should be able to resume work. The plain purpose of the court was to require the assailants to indemnify the claimant for loss of wages to the extent of the payments made. The suggestion is also made upon the part of the respondent that the payments made to the claimant could in some sense be taken as liquidating his claim for physical suffering and for the indignity suffered by him, leaving his claim for compensation for loss of wages unaffected. This suggestion is coupled with the admission that such a holding might put into the claimant's hands more money than he would be entitled to receive under the Workmen's Compensation Law. The assignment by the claimant did not assume to split the cause of action into one for loss of wages and one for suffering, but was of the entire cause of action. In answer to the suggestion of the respondent that the argument of the appellants as to the application of the moneys paid to the claimant by the assailants in reduction of the employer's liability to the claimant would not apply unless the amount paid to the claimant could be offset or proved in mitigation of the damages which the claimant would be. entitled to recover in an action at law against the assailants, it is to be observed that the employer's recovery is limited to a sum sufficient to indemnify him, and hence that the application of the moneys in reduction of the employer's liability to the claimant necessarily reduces the employer's right of recovery against the assailants correspondingly. If the respondent's position is correct, and this application of the moneys be not made, the claimant will receive double compensation, or approximately one-third more during the greater part of his disability than he received as full wages, and that at the expense of an employer whose acts were in no way responsible for claimant's injuries. Furthermore, if the respondent's position is correct, the assailants can be relied upon to make a second payment of the sums now being paid by them to the claimant. Thus the claimant would be allowed to retain moneys which he has received from the assailants upon the cause of action since he disposed of it, which he would be compelled to credit had he remained the owner of his cause of action, or had the moneys been paid to him before he disposed of the cause of action. It was said in Lester v. Otis Elevator Co., 169 App. Div. 613, 155 N. Y. Supp. 524: "Where an employé is injured by the act of a third party, in the course of his employment, he is nevertheless entitled to claim compensation under the statute. But it is only reasonable that, in such cases, the third party should be made to pay the damages caused by his wrongful act, and, of course, the employé is not entitled to such damages and the statutory compensation at the * * same time. Section 29 accordingly makes provision for the employer's 'Subrogation to remedies of employé.' * Section 29 does not, however, prevent an employé from bringing an action for damages against such third party himself; it recognizes his right to do so if he chooses. But if he does elect to do so, he can claim compensation under the statute only for the deficiency, if any, between the amount collected from such third party and the statutory compensation." In the case of Woodward v. Conklin & Son, Inc., 171 App. Div. 736, 157 N. Y. Supp. 948, this court held in effect that any moneys received from a third person responsible for the accident should be applied in reduction of the liability of the employer to the employé for compensation, although in that action a release had been given by the employé to the third party without consideration. In the case of Miller v. New York Railways Co., 171 App. Div. 316, 157 N. Y. Supp. 200, which was an action brought by the employé against a third party to recover damages on account of its alleged negligence causing the injuries to the plaintiff, it was held that an answer which alleged that the plaintiff prior to the commencement of the action had made a claim under the Workmen's Compensation Law for compensation for his disability due to the accident which was the basis of the award and had received an award of compensation constituted a good defense. Referring to section 29, the court said: "The reason for the statutory declaration as to election is founded upon the common-law rule that there should not be a double satisfaction for the same injury." The provision of section 29 requiring the employer to contribute only the deficiency should the employé elect to proceed against the wrongdoer impliedly requires the application in reduction of the employer's liability of any amounts received from the third party. The effect of the acceptance of these payments by the claimant was to correspondingly reduce the liability of the employer to the claimant. Hence the award should have been only for the balance which existed up to the time the award was made. The award must be reversed, and the case remitted to the commission to allow the modification of the award by deducting from it the moneys so received by the claimant from the assailants up to August 14, 1916. All concur. FICKLEN et al. v. F. WILLIAM STOCKER, Inc. (Supreme Court, Appellate Term, First Department. July 19, 1917.) 1. PATENTS 203-ASSIGNMENT-ACTION FOR PAYMENT-RECOVERY. Plaintiff could not recover the payments stipulated under a contract assigning his rights in certain letters patent and inventions to defendant unless he proved either his full compliance with the contract, or that any breach of a material covenant by him had been waived by defendant. 2. PATENTS 203-ASSIGNMENT OF PATENT RIGHTS-COUNTERCLAIM. In such case defendant could not recover upon its counterclaim based on plaintiff's refusal to comply with a term of the contract, except upon proof that because of the breach it had elected to rescind the contract and was damaged to the amount of its expenditure thereunder. 3. PATENTS203-ASSIGNMENT OF PATENT RIGHTS-CONSTRUCTION. Where plaintiff assigned his rights in letters patent to defendant by contract providing that he should execute all instruments "which may be necessary or required," by defendant in order to carry out the contract, the contract gave defendant full title to any patent that might be issued, and plaintiff's refusal to sign a formal consent to the issuance of such patents in the defendant's name was not a breach of the contract, entitling defendant to recover on its counterclaim, based upon such refusal. Bijur, J., dissenting in part. Appeal from Municipal Court, Borough of Manhattan, Seventh District. Action by William E. Ficklen and another against F. William Stocker, Incorporated, with counterclaim by defendant. From a judgment after a trial without a jury, plaintiffs appeal. Reversed, and judgment directed for plaintiffs, and counterclaim dismissed. Argued June term, 1917, before LEHMAN, BIJUR, and ORDWAY, JJ. George H. D. Foster, of New York City, for appellants. LEHMAN, J. [1, 2] I concur in the opinion of Mr. Justice Bijur in so far as it holds that the plaintiffs are entitled to payment of the sums which the defendant agreed to pay under its contracts on the 1st days of August, September, October and November, but I dissent from his view that the defendant is permitted to offset from such payments the amount allowed by the court upon the defendant's counterclaim. The evidence shows that the plaintiffs assigned to the defendant their rights, title, and interest in and to certain letters patent and inventions. Under the instrument by which the assignment was made the defendant agreed to pay to the plaintiffs certain sums for the assignment, and also agreed to pay royalties upon articles manufactured under the patents. The plaintiffs agreed to "execute any and all papers or instruments which may be necessary or required by said F. Stocker, Inc., in order to carry into full force and effect this sale, assignment and transfer." The defendant urges as a defense to the action brought by the plaintiffs for the stipulated monthly payments that the plaintiffs have refused to comply with this clause of their agreement. It has also set For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes up as a counterclaim that by virtue of the plaintiffs' refusal to comply with this clause of the agreement it was damaged in the amount it had expended in the prosecution of the applications for patents and the development of the patents assigned. It seems to me quite plain that the plaintiffs can, in no event, recover the stipulated payments unless they prove either full compliance with the contract on their part or that any breach of a material covenant on their part has been waived by the defendant. On the other hand, the defendant can obviously not recover upon its counterclaim except by proof that because of a breach of contract on the part of the plaintiffs it has elected to rescind the contract made with the plaintiffs, and is consequently damaged in the amount of its expenditure under the contract. In other words, it seems to me that the proof necessary to sustain a judgment upon the plaintiffs' cause of action would also, as a matter of law, require a dismissal of the defendant's counterclaim. [3] Upon the trial the defendant practically assumed the burden of establishing that the plaintiffs had breached their agreement. In fact the entire case was tried with apparent disregard of the pleadings and of the rules governing the burden of producing evidence. It appeared from the testimony that after the plaintiffs had filed their application for the patents and had assigned their rights to such patents to the defendant, the patent office refused to issue a patent in the name of the defendant unless the plaintiffs signed a formal consent to such issuance. The defendant thereupon requested the plaintiff to sign such a consent, but the plaintiffs refused, either unconditionally or subject to a condition which the trial justice has held was unreasonable. It is not claimed that the assignment made by the plaintiffs did not actually result in the vesting of full title to the patents in the defendant regardless of whether the patents were issued in the name of the assignee or of the assignor. It can hardly be claimed, therefore, that such consent was necessary to carry into full force and effect the provisions of the agreement. The defendant concedes that with or without such consent it had full title to any patent that might be issued, and it fails to point out in any way how it could be injured if the patents were actually issued in the name of its assignors. It claims, however, in effect, that under the contract the plaintiffs were to execute, not only the instruments "which may be necessary to carry into full force and effect this sale, assignment and transfer," but also such papers as shall be "required by the said F. William Stocker, Inc.," and that consequently the defendant had the right to determine for itself. what instruments it would require. This interpretation of the contract seems to me obviously incorrect because the plaintiff's agreed to furnish only "the instruments which are required by the said F. William Stocker, Inc., in order to carry into full force and effect this sale, assignment and transfer," and unless the instruments demanded by the defendant are actually required by it for that purpose the plaintiffs were under no obligation to issue such instruments. In order to determine whether the consent was required for such purpose, we have a right to look not only to the assignment, but to the entire contract of the parties made at the time of such assignment. It appears that simultaneous with such assignment the defendant made a mortgage to the plaintiffs of the property covered therein as security for the due payment of the consideration for such assignment. That mortgage gave to the plaintiffs a right upon default to retake the assigned property and to sell the same. It further contained a provision that the defendant, the mortgagor, should have at any time thereafter the right to assign to the mortgagees, the plaintiffs herein, their right, title, and interest in and to the mortgaged property, "and thereby be relieved and released from any and all obligations under this mortgage except as to such payments on account of the sales and deliveries hereinbefore specified as may be then due and unpaid." In view of the fact that concededly the defendant had full title to the assigned property without the issuance of the letters patent in their name, and in view further of the fact that under the mortgage these plaintiffs still had a substantial interest in and rights to the property which could best be protected and enforced if the patents were not issued in the name of the assignee, it seems to me that the trial justice erred in holding that the refusal under such circumstances by the plaintiffs to sign a consent constituted any breach of the contract, and that such consent could be required by the defendant in order to carry into full force and effect the sale, assignment and transfer. Of course, if the plaintiffs did not breach their contracts, the defendant cannot recover on its counterclaim. On the other hand, if this refusal constituted a breach of the agreement which would permit the defendant to rescind the contract, the plaintiffs cannot recover any payments due under the contract unless the defendant's failure to rescind constitutes a waiver of the breach. If, with knowledge of the breach, it continued to enjoy the fruits of the contract, then probably the retention of the benefits would constitute a waiver of the breach. After a waiver of the breach it would not be in any position to avail themselves of it by rescission and without rescission the defendant could not recover on its counterclaim, since the only damages claimed therein would arise only upon a rescission. In the present case I have considerable doubts as to whether there is sufficient evidence of such a waiver, for it does not appear that after the breach the defendant received any profit from the patent or did any affirmative act under the contract which might be considered a waiver of the breach, except to continue to negotiate with the plaintiffs for the purpose of obtaining compliance with its demands. Moreover, the plaintiffs are suing upon a complaint alleging full compliance on their part, and neither at the time of the trial nor on this appeal do they claim that they have established such a waiver. See Rosenthal Paper Co. v. National Folding Box & Paper Co., 175 App. Div. 606, 162 N. Y. Supp. 814. In any event, however, if the plaintiff is entitled to recover under the contract, the defendant cannot recover upon a counterclaim based on a rescission of the con tract. For these reasons, in my opinion the judgment should be reversed, with $30 costs, and judgment directed in favor of the plaintiffs for |