Monday, 30 June 2014

Low Valuations at the Heart of Tax Avoidance IP Schemes – An IP Solution?

Professor Andrew Blair-Stanek of the University of Marlyand, Francis King Carey School of Law, has published an article on SSRN titled, “Intellectual Property Law Solutions to Tax Avoidance” (forthcoming 62 U.C.L.A. Law Rev. __).  The article helpfully explains how transferring IP can result in substantial tax savings for IP owners and why initial low valuations of IP are at the heart of tax avoidance schemes.  He focuses his proposal on addressing tax avoidance schemes by using substantive IP law, as well as procedural rules involving IP cases, to incentivize IP owners to make initial valuations of IP closer to their “actual value.”  He provides a hypothetical example of the problem involving Google and licensing:

When Google’s California-based engineers develop a promising invention, Google owns the rights to all patents that can be obtained on the invention. Corporate ownership of employee-created IP is common practice.

Google then quickly licenses all the patent rights to a subsidiary in a tax haven like Ireland. Licensing allows the future profits from the patents to accrue to the Irish subsidiary, while the legal ownership remains with Google itself in the U.S., with its robust protection for IP owners.  This license is respected, since Google and its Irish subsidiary are separate corporate entities, and IP can be freely licensed.

U.S. tax law requires that Google receive “arm’s-length” royalties from its Irish subsidiary for the patent license.  The “arm’s-length” price is defined as the price that would have been charged if Google had instead been dealing with an unrelated party under the same circumstances.  The “arm’s-length” principle for cross-border transactions is deeply enmeshed in not only U.S. tax law, but also the numerous bilateral tax treaties that the U.S. has signed with its trading partners, including Ireland.  Google must pay U.S. corporate tax of 35% of these “arm’s-length” royalties.  

Herein lies the mischief. Google does not transfer its promising IP to unrelated parties, so there is no observable “arm’s-length” price. Valuing IP – particularly brand-new IP – is difficult and subjective. Unlike a mass-produced machine or a ton of aluminum, each piece of IP is unique and its economic potential is difficult to predict. Treasury regulations provide detailed econometric methods to estimate IP values, but these are extremely imprecise, often leading to a wide possible range of acceptable prices.

Google must hire appraisers (oftentimes economists) to ascertain an “arm’s-length” price for the transfer to Ireland, and to support that price with extensive contemporaneous documentation.  But Google chooses and pays these appraisers, who are inclined to err towards lower valuations. As a leading tax practitioner recently observed, “appraisers tend to agree with their paymasters on [valuation] questions.”

After the transfer to Google’s Irish subsidiary, the patented technology is incorporated into a new Google device.  The Irish subsidiary oversees a Chinese contract manufacturer’s building of the new devices.  The Irish subsidiary then sells the devices for a full markup that includes the value of the IP to Google distribution subsidiaries worldwide, who then sell them to consumers. The substantial profits from the IP remain in Ireland, typically not subject to Irish tax, and not subject to U.S. tax as long as the cash is not returned to the U.S.

He also discusses why meaningful change in tax laws is unlikely to happen which leads to his IP focused proposals.  Why is the solution unlikely to be based in tax law?  He provides, at least two reasons: nearly impossible coordination of tax law between many countries; and information asymmetries between multinationals and government tax authorities.  In describing the information asymmetry problem, he states that:

First, information asymmetry refers to the fact that the taxpayer inherently knows far more about the characteristics, potential, and value of its IP than does the IRS [U.S. Internal Revenue Service] (or any appraiser). For example, Google understands how its new invention could fit profitably into a new smartphone in a way that neither a team of IRS experts, nor a team of private appraisers, ever could. When the IRS challenges a low transfer price in court, the taxpayer has a depth of understanding of its own IP that gives it a large advantage in refuting the IRS challenge.

Largely as a result of this information asymmetry, the IRS has lost both high-profile IP transfer-pricing cases litigated in the past decade. A quote from one of those opinions encapsulates the problem: “Taxpayers are merely required to be compliant, not prescient.” Taxpayers can fully comply with the law by disclosing all facts to their appraisers who must determine the “arm’s-length” transfer price. Any outsider (including judges) will not be able to discern its profit potential. But the multinational can determine its profit potential, which materializes after the IP is safely in Ireland.

His proposals for change (or perhaps, in some cases, suggestions for interesting arguments) essentially focus on using the initial low valuation position taken by the IP owner against it later in litigation (when the relevant information is likely discoverable) and licensing.  For example, he states:

First, the defendant should argue that the artificially low price is evidence that the patent was obvious at the time of invention, and hence is invalid.  Patent law recognizes that non-technical “secondary considerations” such as commercial success and licensing success are evidence for or against the validity of a patent. The artificially low price fits nicely into this rubric, because it demonstrates with a hard figure that, immediately after the invention, Google did not see the patent as being a substantial innovation. Additionally, the expert documentation justifying the low price may include damaging language downplaying the patent’s innovativeness.

Second, the defendant should argue that, even if the patent is valid, it has a narrow scope. Courts give innovative patents a broad scope that allows finding infringement whenever the infringer uses a close equivalent to the claimed invention. By contrast, less-innovative patents are given a narrower scope. The low transfer price is evidence that Google did not perceive the patent as particularly innovative, and thus should receive a narrower scope. Again, the expert documentation justifying the low price will often include damaging language downplaying the innovation.

Third, even if the court finds the patent valid and infringed, the defendant should be able to point to the low transfer price as evidence that damages should be correspondingly low. After all, a patent’s price reflects its potential to generate profits and royalties, and patent damages replace the patentholder’s lost profits and royalties.

Fourth, patent plaintiffs typically request a preliminary injunction against infringement and, if they prevail on the merits, then request a permanent injunction. But a low price for the patent suggests that infringement is unlikely to cause Google “irreparable harm,” which is required for injunctions. The low price also suggests Google does not come out ahead on the “balance of hardships,” another requirement for injunctions. Additionally, as discussed earlier, the low transfer price is evidence of invalidity and narrower scope, both of which suggest Google has a lower “likelihood of success on the ultimate merits,” a requirement for a preliminary injunction.

Finally, even if the court finds Google’s patent valid and infringed, the defendant should be able to argue that Google’s tax avoidance was “patent misuse.” When a court finds that a patentholder used the patent in a way that violates public policy, it will refuse to award damages or injunctive relief, at least until the misuse has been remedied. Misuse does not require that the patentholder harmed the defendant, only that the patentholder used the IP in a way that violated public policy. If the court finds Google’s tax avoidance sufficiently egregious, it could refuse relief to Google until it has repaid the U.S. Treasury the taxes it improperly avoided.  

Professor Stanek also discusses how copyright and trademark law have similar doctrines, such as copyright fair use, strength of the mark and secondary meaning, and damages that could be used to incentivize valuations closer to “actual valuation” and how the theories underlying IP protection support his proposals.  Notably, he states that usage of the initial transfer valuation could be used to undermine the IP holders royalty negotiation position if his proposals are adopted.  Do readers know of situations where the initial transfer valuation has been used in negotiating royalties, arguing damages, or in arguments concerning the scope or validity of IP?  (Hat tip to Professor Paul L. Caron’s (Pepperdine University) Taxprof blog for a lead to the article). 

1 comment:

gaffneyn said...

Some interesting suggestions there. I quite like suggestions 3 and 4, and think they make a lot of sense.

However, while suggestions 1 and 2 certainly show some creative thinking, I'm not sure they sit particularly well with established patent law. While secondary indicia are sometimes relied on to establish validity in the absence of other factors, I'm not sure how well the inverse works. Commercial success is definitely not a prerequisite for patentability, as there are plenty of novel, non-obvious inventions out there that will never make any money (c.f. the fabled over-engineered mousetrap). Also, while it may indeed be possible that "more innovative" patents have been observed to be given a broader construction, this is not necessarily as the result of a cause-and-effect relationship.