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TMI Blog2013 (2) TMI 448X X X X Extracts X X X X X X X X Extracts X X X X ..... ore us. 3. Synopsis U.S., is the owner of the copyright. It has granted a license to Synopsys International Limited, Ireland, the assessee. The technical license agreement is for a consideration to enable the assessee to use and commercially exploit the intellectual property in the Electronic Design Automation (for short 'EDA') Tool and Software in certain geographies. 4. Synopsis U.S. specially requires the assessee to enter into End User Software License Agreement (for short 'EULA') with customers to produce Synopsis U.S. property rights in the production upon documentation and intellectual property and in no event, less than a reasonable standard of care. It is for that reason that the 'EULA' between the assessee and the Indian customer has elaborate and restrictive clause, primarily with the object of protecting the owner's rights in the products, documentation and the intellectual property in the software. In terms of the aforesaid license, the assessee in turn, has entered into 'EULA' with various customers. A reading of the aforesaid agreement shows that the Indian customer has purchased a licensed product i.e., Electronic Design Automation (for short 'EDA') tool/ Software ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... greement as "Synopsis Software". Had this software been itself got through license from other companies, the name of the software would have borne the name of that company from which it was received. So, the words in ownership clause of the agreement i.e., "licensors own..." has been only used as a matter of precaution and of no avail whereas the ownership lies with the respondent. What is transferred through the agreement is a license to use the Synopsys Software i.e., a copyright owned by the appellant itself and not the copy of a copyrighted article. Hence, the receipt squarely falls under the definition of Royalty and therefore, taxable in India. However, the interest levied was set aside with a direction to the Assessing Officer to compute the interest after determining the income. Accordingly, he allowed the appeals in part. Aggrieved by the said order, the assessee preferred appeals before the Tribunal. The Tribunal held that the assessee was allowed to license to use the software. According to the assessee, it is a goods and by way of license agreement, the software only was allowed to use. In other words 'a copyrighted article was transferred and no transfer was made in re ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the transaction entered into between the assessee - Indian customer do not fall within the mischief of the definition of royalty as contained in Explanation 2 to Clause (vi) of section 9 (1) of the Act. The said provision applies to a case of transfer of all or any other rights in the copyright. In the instant case, admittedly, the copyright is not transferred. What is transferred is only the use of the copyrighted article. The said article is available on the shelf and anybody can i purchase the same and as long as any right in the copyright as such is not transferred, the consideration paid for such copyrighted article would not constitute royalty as defined under the Act. He relied upon the judgment of the special Bench in the case of Motorola Inc. (supra). He also relied on the order passed by the advance ruling authority, in the case of Dassault Systems K.K., In re [2010] 188 Taxman 223 (AAR - New Delhi) and submitted the question which arise for consideration in these' appeals are squarely covered by the aforesaid order. Therefore, he submits that the order passed by the Tribunal is valid and legal and do not call for any interference. 9. In the light of the aforesaid facts ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ot a 'Royalty', which is liable to tax, they rely principally on two judgments. First in the case of Motorola Inc. (supra). The question which was referred to the Special Bench was as under:- "Whether, on the facts and in the circumstances, the revenues earned by the appellant from supply of equipment and software to Indian Telecom Operators were taxable in India"? After referring to the arguments of the learned counsel and referring to the tax provisions of the Income-tax Act, the Special Bench of the Tribunal was of the view that "the crux of the issue is "whether the payment is for copyright or for a copyrighted article". If it is for copyright, it should be classified as royalty both under the Income-tax Act and under the DTAA and it would be taxable in the hands of the assessee on that basis. If the payment is really for a copyrighted article, then it only represents the purchase price of the article and, therefore, cannot be considered as royalty either under the Act or under the DTAA. This issue really is the key to the entire controversy and they proceeded to address the issue. After noticing the definition of copyright as given in the copyright Act, 1957 in section 14 of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... same manner in which the owner can, it can then be said that those specific rights concerning the use of copyright have been conferred on him. ** ** ** 17.1 Passing on a right to use and facilitating the use of a product for which the owner has a copyright is not the same thing as transferring or assigning rights in relation to the copyright. The enjoyment of some or all the rights which the copyright owner has, is necessary to trigger the royalty definition. Viewed from this angle, a non-exclusive and non-transferable licence enabling the use of a copyrighted product cannot be construed as an authority to enjoy any or all the enumerated rights ingrained in a copyright Where the purpose of the licence or the transaction is only to establish access to the copyrighted product for internal business purpose, it would not be legally correct to state that the copyright itself has been transferred to any extent. It does not make any difference even if the computer programme passed on to the use ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Taxation Avoidance Agreement entered into between the Government of India and the Government of United States of America with respect to the subscription fees? 3. Whether, on the facts and circumstances of the case, if the applicant is not taxable in India for the subscription fees, its customers in India will be required to withhold taxes under section 195 of the Act on subscription fees paid to the applicant? 4. Assuming that the applicant has no other taxable income in India, whether, on the facts and circumstances of the case, the applicant will be absolved from filing a tax return in India, under the provisions of section 139 of the Act with respect to the subscription fees? 17. While considering the said question, at para 3 it was held as under : - "3. Broadly, the contention of the applicant is that no tax liable to be paid on the subscription fees received from the customers in India as it does not constitute 'royalty' or fees for technical services' either under the provisions of the Income-tax Act, 1961 or the DTAA (Treaty) between India and USA, Moreover, as the applicant does not have permanent establishment (PE) in India, the subscription fees cannot be ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... available to the licensee. The license, it must be noted is a non-exclusive license. The term 'exclusive license' confers on the licensee and persons authorized by him, to the exclusive of all other persons, including the owner of the copyright, any right comprised in the copyright in a work'. The expression 'granting of license' placed within brackets takes colour from the preceding expression 'transfer of all or any rights'. It is not used in the wider sense of granting a mere permission to do a certain thing nor does the grant of licence denude the owner of copyrights all or any or any or his rights. A license granting some rights and entitlements attached to the copyright so as to enable the licensee to commercially exploit the limited rights conferred on him is what is contemplated by the expression 'granting of license' in clause (v) of Explanation 2." 9.1..... The expression 'exclusive right' in the opening part of section 14 is very important and it qualifies all the components of clause (a). The applicant is not conferred with the exclusive right to reproduce the work (including the storing of it in electronic medium), as contemplated by sub-clause (i) of section 14(a). ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e transfer of all or any rights (including the granting of a licence) in respect of computer software supplied by a non-resident manufacturer along with a computer or computer-based equipment under any scheme approved under the Policy on Computer Software Export, Software Development and Training, 1986 of the Government of India] Explanation 2 - For the purposes of this clause, "royalty" means consideration (including any lump sum consideration but excluding any consideration which would be the income of the recipient chargeable under the head "Capital gains") for- (v) the transfer of all or any rights (including the granting of a licence) in respect of any copyright, literary, artistic or scientific work including films or video tapes for use in connection with television or tapes for use in connection with radio broadcasting, but not including consideration for the sale, distribution of exhibition of cinematographic films; or (vi) the rendering of any services in connection with the activities referred to in sub-clause (i) to (iv), (iva) and (v) [Explanation 3. For the purposes of this clause, 'computer software' means any computer programme recorded on any disc, tape, perfor ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... defined in Explanation 2. 22. Similarly, clause (v) deals with copyright, literary, artistic or scientific work and the consideration for the transaction of all or any rights (including granting of licence) in respect of any copyright, literary, artistic or scientific work as 'Royalty'. Similarly, what is excluded from the definition of Royalty' are consideration for the sale, distribution or exhibition of cinematographic films. Whereas, it expressly states the rendering of any services in connection with the activities referred to in sub-clauses (i) to (iv). (iva) and (v) also constitutes 'Royalty'. For the purpose of this provision, any rights includes granting of a licence, it should be in respect of any copyright. It is not a right in copyright. Therefore, the words "in respect of assumes importance for the proper understanding of what the legislature meant in defining 'Royalty' as they have done in Explanation 2. The argument is that it is only the consideration paid for transfer of a right in the copyright, which would constitute 'Royalty' and any consideration paid for the transfer of a copyrighted article do not involve any transfer or right and therefore, it is outside th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... r not therefore any services have been rendered "threat" that is, at the stations sidings, wharves, depots, warehouses, cranes and other similar matters the other class of terminals in respect of these stations, sidings, wharves, depots, warehouses, cranes and similar other matters remain. A further question thus arises as regards the interpretation of the phrase "in respect of". Does it mean charges for the mere provision and maintenance of stations, sidings, depots, wharves, warehouses, cranes and other similar matters are the terminals or does it contemplate charges only for use of sidings, stations, wharves depots, warehouses, cranes and other similar matters? The words "in respect of" are wide enough to permit charges being made as terminals so long as any of these things, viz., stations, sidings, wharves, depots warehouses, cranes and other similar matters have been provided and are being maintained. The question is whether the import of this generality of language should be cut down for any reason. It is well settled that a limited interpretation has to be made on words used by the legislature in spite of the generality of the languages used where the literal interpretation ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... at the interminable disputes that would arise between the Railway Administration and the Railway users, if the fact of user of stations, sidings and other things mentioned had to determine the amount payable, would be unhelpful not only to the Railway Administration but also to the using public. The sensible, way was therefore to make a charge leviable for the mere provision of these things irrespective of whether any use was made thereof. That was the reason way such wide words "in respect of was used. We are therefore of opinion that the words "in respect of" used in section 3(14) mean for the provision of and not "for the user of." 24. The High Court of Bombay in the case of Anusya Vithal v. J.H. Mehta, Addl. Authority Under Payment of Wages Act AIR 1960 Bom. 201 held as under : "4. Another requirement of a payment to fall within the term "wages" is that it must be "in "respect of employment or work done in such employment." The expression "in respect of" means "attributable to" [see Asher v. Seoford Court Estates Ltd. [1950 A.C. 508, 5261 or, if it is given a wider meaning, "relating to or with reference to" [see Tolaram Relumal v. State of Bombay [1955] 1 SCR 158 at P. 165: ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... remises, and is covered by clause (ix) of sub-section (2) of section 10 of the Income-tax Act. The assessee is entitled to get allowance for the same under section 10(1) of the Indian Income-tax Act, 1922. The Appellate Tribunal was right in giving allowance to the assessee for a sum of Rs. 125 paid by him under the Bihar and Orissa Municipal Act, 1922." 26. The Apex Court in the case of Union of India v. Vijay Chand Jain AIR 1977 SC 1302 held as under:- "4. The contravention alleged is of section 4(1) which prohibits, inter alia, sale of any foreign exchange. Foreign exchange as defined in section 2(d) means foreign currency. Under section 23(1B) any currency, security, gold or silver, or goods or any other money or property "in respect of which" the contravention has taken place is liable to be confiscated to the Central Government. The currency confiscated this case was Indian currency. The question is whether the Indian currency constituting the sale proceeds of foreign exchange seized from the respondent was currency in respect of which the contravention had taken place. The words "in respect of" admit of a wide connotation; Lord Greene M.R. in Cunard's Trustees v. Inland Re ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e section, under the guise of interpreting a fiscal legislation, which is totally impermissible in law. When the legislature has advisedly used the words 'in respect of', the intention is clear and manifest. The said phrase being capable of a broader meaning, the same is used in the section to bring within the tax net all the incomes from the transfer of all or any of the rights in respect of a copyright. In a taxing statute provisions enacted to prevent tax evasion are to be given a liberal construction to effectuate the purpose of suppressing tax evasion, although provisions imposing a charge are construed strictly there being no apriori liability to pay a tax and the purpose of charging section being only to levy a charge on persons and activities brought within its clear terms. Therefore, the specific words used in a taxing statute, charging tax cannot be ignored. It is not the consideration for transfer of all or any of the rights in the copyright. Without transferring a right in the copyright it is possible to receive consideration for the use of the intellectual property for which the owner possess a copyright. Ultimately, the consideration paid is for the usefulness of the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ry legal concept. 29. The copyright Act, also do not define the word copyright in the definition section 2. However, Section 14, gives the meaning of "copyright". This section was substituted for the previous one by the Copyright (Amendment) Act of 1994. Section 14 insofar as it is relevant is extracted hereunder: "14. For the purposes of this Act "copyright" means the exclusive right subject to the provisions of this Act, to do or authorize the doing of any of the following acts in respect of a work or any substantial part thereof namely: (a) in the case of literary, dramatic or musical work, not being a computer programme - (i) to reproduce the work in any material form including the storing of it in any medium by electronics means, (ii) to issue copies of the work to the public not being copies already in circulation; (iii) to perform the work in public, or communicate it to the public. (iv) to make any cinematograph film or sound recording in respect of work; (v) to make any translation of the work;' (vi) to make any adaptation of the work; (vii) to do, in relation to a translation or an adaptation of the work, any ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the interpretation clause. All definitions given in an interpretation clause are therefore normally enacted subject to the qualification "unless there is anything repugnant in the subject or context, or unless the context otherwise requires". Even in the absence of an express qualification to that effect such a qualifications is always implied. However, it is incumbent on those who contend that the definition given in the interpretation clause does not apply to a particular section to show that the context in fact so requires. 32. In this background it is pertinent to note the opening words of section 14. It expressly state that "for the purposes of this Act". The intention of the parliament in expressing the meaning of the word in that manner and not defining the said term in the definition section cannot be lost sight of. Further, the legislature has chosen to employ the word 'means' in defining the meaning of the word 'copyright' which again makes the intention very clear that the said meaning to the word "copyright" is restrictive and exhaustive. Then the further words, 'exclusive right subject to the provisions of this Act' further imposes a rider on the meaning of the word ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... k to the public pot being copies already in circulation or to sell or give on commercial rental or other than for sale or for commercial rental any copy of the computer programme. The reproduction which is sought to be prohibited by the Act but for which the owner of the copyright could be put to an enormous loss. The said definition does not deal with the ordinary meaning of the word 'copyright' which includes the right to use the work. It is a negative right. If is not a right to do something but rather a right to restrict others from doing certain acts. It is in this context the word 'exclusive' has to be understood. When in the Act itself after using the word exclusive right in section 14, when it comes to the question of licence of a copyright, if need not necessarily be an exclusive right, but any interest in the right, the word exclusive has to be restricted firstly to the Act itself and secondly to situations which fall outside the scope of section 30 of the Act. Therefore, the expression 'copyright' used in the Act cannot be the same as used in the Income-tax Act. In the Income-tax Act, when the legislature advisedly used the word 'in respect of a copyright' it cannot be c ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... any disk, tape, perforated media or other information storage devices and includes any such programme or any customized electronic data. Though this definition holds good for the purposes of second proviso to s. 9(l)(vi), the ordinary meaning and understanding of computer software is no different. Computer programme as such is not defined under the I.T. Act. However, Computer programme is defined in the Copyright Act as follows: "Computer programme means a set of instructions expressed in words, codes, schemes or in any other form including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result." 34. It is also worth mentioning that some routines may be written in assembly code, essentially a set of memories for object code which another program translates directly into that code. This is normally done when the programmer needs to drive the hardware directly, or where speed is required, as it gives very precise control over the program's operation. Once all sections are complete, they are fitted together to produce a complete version in source code, i.e., in human-readable form that gives the user as little information ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... er could not make backup copies of the program for security purposes, although some licenses specifically conferred a limited right to make backup copies. 36. Ultimately, what the end-user, who pays the consideration requires is, the benefit of the user of the intellectual property, whether for his personal use or for commercial use. Merely because the end-user is not permitted to make commercial use of a copyrighted article by means of re-production of copyrighted article, it would not take the case out of the provision. The user may be for personal use or for commercial use. The essence of the copyright is the usefulness of intellectual property embedded in such copyright. One of the ways of exploiting a copyright is by re-production for commercial use. But that is not the only use to which a copyright could be made use of. It could be used for their personal use and that is the reason why consideration is stipulated even for such personal use. Though the rights that are transferred in such a transaction may be limited as compared to transfer of a copyright for commercial use. In particular, a software or a computer programme is such a sophisticated goods that it may be sold of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... chnical services. The relevant portion reads as under: (1) Royalties or fees for technical services arising in a Contracting State and paid to a resident of the other Contracting State may be taxed in that other State. (2) However, such royalties or fees for technical services may also be taxed in the Contracting State in which they arise, and according to the laws of that State, but if the recipient is the beneficial owner of the royalties or fees for technical services, the tax so charged shall not exceed 10 per cent of the gross amount of the royalties or fees for technical services. (3) (a) The term "royalties" as used in this article means payments of any kind received as a consideration for the use of, or the right to use, any copyright of literary, artistic or scientific work including cinematograph films or films or tapes for radio or television broadcasting, any patent, trademark, design or model, plan, secret formula or process or for the use of or the right to use industrial, commercial or scientific equipment, other than an aircraft, or for information, concerning industrial, commercial or scientific experience; (b) The term "fees for technical ser ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of the royalties contained in Article 12 would have the effect of superceding the definition of royalty in the Income-tax Act. If the case of the assessee do not fall within the term "royalty" as per the definition under Article 12 of the agreement. As the agreement is superceding the definition) of term "royalty" under the Act, the consideration paid to him is not liable to be taxed in India. It is submitted that as the Article which is licenced in this case and the consideration paid to the same does not fall within the definition of royalty, under Article 12 the assessee is not liable to pay tax. 39. It is no doubt true the provisions of the DTAA overrides the provisions of the Income-tax Act. In the DTAA the term 'royalty' means payments of any kind received as a consideration for the use or the right to use any copyright of literary, artistic or scientific work whereas in the Income-tax Act, royalty means consideration for the transfer of all or any rights including the granting of a licence. Therefore, under the DTAA to constitute royalty there need not be any transfer of or any rights in respect of any copyright. It is sufficient if consideration is received for use of or t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ding the right of reassign, while a licence is personal and not assignable without the grantor's consent. An exclusive licence is a leave to do a thing, and a contract not to give leave to anybody else to do the same thing, ft confers no interest, or property in the thing but only makes an action lawful, which, without it, would have been unlawful. 43. A licence is a permission to do something that would otherwise be unlawful. The question arises, therefore, as to what legal permission is granted by a software licence. The answer is, briefly, that in some cases the licence will be a permission to use confidential information, and in virtually in all cases it will be a permission to copy a copyright work. If the software has been kept secret by the producer, or only supplied on conditions of confidentiality and has not been published too widely, then the software licence will be akin to a licence of confidential information or know-how. The owner or licensor of a copyright, has a right to grant permission to use the software or a computer programme, in respect of which they have a copyright, without transferring the right in copyright. It is one of the right of a copyright. owner o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ion that; (a) is or becomes generally known or available by publication, commercial use or otherwise through no fault to the receiving party; (b) is known and has been reduced to tangible form by the receiving party at the time of disclosure and is not subject to restriction; (c) is independently developed by the receiving party without use of the disclosing party's Confidential Information; (d) is lawfully obtained from a third party who has the right to make such disclosure or; (e) is released for publication by the disclosing party in writing 1.4 "Design" means the representation of an electronic circuit or device(s), derived or created by License through the use of the Licensed Product in their various formats including, but not limited to, equations, truth tables, schematic diagrams, textual descriptions, hardware description languages and netlists. 1.5 "Design Techniques" means the Synopsys-supplied data circuit and logic elements, libraries, algorithms, search strategies, rule based and technical information incorporated in the Licensed Product and employed in the process of creating Designs. 1.7 "Documentation" means any user manuals, r ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ation; and (iii) in the Use area. Licensee may make a reasonable number of copies of the licensed Software for backup and/or archival purposes only. 2.1.1 Term of License The term of the license granted herein shall be continuous until non-renewal of the Support Agreement, (unless the license is sooner terminated in accordance with section 8 of this Agreement), whereupon Licensee shall be granted a twenty-(20) year key to use the Licensed Software at the last supported level, provided that if Licensee and Synopsys have agreed that Licensee may obtain time-based licenses for the Licensed Products, as indicated in the applicable quote, purchase order and/or License Key, the term of the license shall be as set forth in the applicable Licensee key. 2.2 Design Ware License If Licensee has purchased a license to Design Ware, Syncpsys hereby grants Licensee the following non-exclusive, non-transferable rights to Design Ware, with no right to sub-license (except as provided below): (i) licensee may use Design Ware in the quantity authorized by the Design Ware License Key, in accordance with the Documentation, in the Use Area (ii) licensee may Implementati ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rposes the Licensed Product; (iii) use the Licensed Product for the benefit of third parties, or allow third parties to use the Licensed Product; (iv) modify, incorporate into or with other software, or create a derivative work of any part of the Licensed Product; (v) disclose the results of any benchmarking of the Licensed Product (whether or not obtained with Synopsys' assistance) to third parties; (vi) use the Licensed Product to develop or enhance any product that competes with a Licensed product; or (vii) employ the Licensed product in, or in the development of, life critical applications or in any other application where failure of the Licensed Product or any results from the use thereof can reasonably be expected to result in personal injury. 3. Ownership 3.1 Synopsys Ownership. Synopsys and/or its licensors own and shall retain all rights, title and interest in and to the Licensed Product, Design Techniques and Documentation, including all Intellectual Property Rights embodied therein, and Licensee shall have no rights with respect thereto other than the rights expressly set forth in this Agreement. Risk in the media only, passes upon Synopsys ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... services shall be provided by Synopsys under the terms and conditions set forth herein and of the Support Agreement. 7. Confidentiality Each party will protect the other's Confidential Information from unauthorised dissemination and use with the same degree of care that each such party uses to protect its own like information. Neither party will use the other's Confidential Information for purposes other than those necessary to directly further the purposes of this Agreement. Neither party will disclose to third parties the other's Confidential Information without the prior written consent of the other party. 8. Termination of License 8.1 Termination. Either party has the right to terminate this Agreement if the other party breaches or is in default of any obligation hereunder, which default is incapable of cure or which, being capable of cure, has not been cured with fifteen (15) business days after receipt of written notice from the non-defaulting party or within such additional cure period as the non-defaulting party may authorize, except that the Licensed Product's failure to substantially conform to the specifications in the Licensed Produce Documentation shall not be dee ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... , and nothing contained in this Agreement shall be construed (i) to give either party the power to direct or control the day-to-day activities of the other or (ii) to constitute the parties as partners, joint ventures, co-owners or otherwise as participants in a joint a common undertaking. 13.9. Injunctive relief. The parties agree that a material breach of this Agreement adversely affecting Synopsys' Intellectual Property Rights in the Licensed Product, Design Techniques or Documentation would cause irreparable injury to Synopsys for which monetary damages would not be an adequate remedy and Synopsys shall be entitled to equitable relief in addition to any remedies it may have hereunder or at law." 45. As is clear from the description of the agreement it is an end-user software licence agreement. Clause 2.1 deals with grant of rights. It provides, Software License Synopsys hereby grants licencee a non-exclusive, non-transferable license, without right of sub-licence of use the licensed software and design techniques only in the quantity authorized by a licensee in accordance with the documentation in the use area. Licensee may make a reasonable number of copies of the licensed s ..... X X X X Extracts X X X X X X X X Extracts X X X X
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