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).
