UNITED STATES TAX COURT
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115 T.C. No. 17
UNITED STATES TAX COURT
MICROSOFT CORPORATION, Petitioner v.
COMMISSIONER OF INTERNAL REVENUE, Respondent
Docket No. 16878-96.
Filed September 15, 2000.
During 1990 and 1991, petitioner engaged its wholly
owned subsidiary, a foreign sales corporation, to act as
its agent for the international sales of standardized
mass-marketed computer software products and computer
software masters.
The standardized software products
were copyrighted articles sold without a right to
reproduce abroad. The software masters were licensed to
related foreign subsidiaries and unrelated foreign
equipment manufacturers with a right to reproduce abroad.
In the notices of deficiency, respondent allowed the
deductions for the foreign sales corporation commissions
attributable to the standardized software products but
denied them with respect to the export of the software
masters.
The issue is whether the software masters
- 2 constitute “export property” within the meaning of sec.
927(a), I.R.C., and sec. 1.927(a)-1T(f)(3), Temporary
Income Tax Regs., 52 Fed. Reg. 6463 (Mar. 3, 1987) (the
temporary regulation).
Held: The temporary regulation is a reasonable and
valid interpretation of sec. 927(a)(2)(B), I.R.C.
Held, further, computer software masters do not
constitute sec. 927(a), I.R.C., “export property”.
James M. O’Brien, Michael P. Boyle, John M. Peterson, Jr.,
Thomas V.M. Linguanti, Andrew J. Gottlieb, Neal J. Block, Scott H.
Frewing, Robert B. Mitchell, Michael J. Bernard, and William H.
Burkhart, for petitioner.
David P. Fuller, John M. Altman, Ronald M. Rosen, Kimberley J.
Peterson, Michelle D. Korbas, and Kevin G. Croke, for respondent.
JACOBS,
Judge:
Pursuant
to
two
notices
of deficiency
addressed to petitioner, respondent determined Federal income tax
deficiencies and an overpayment, as follows:
Tax Year Ended June 30
Deficiency
Overpayment
1987
1988
1989
1990
1991
$6,279,330
4,618,862
1,644,505
--8,810,992
------$1,944,520
---
The deficiencies determined for 1987-89 are attributable to
respondent’s adjustments to general business credit carrybacks from
- 3 1990 and 1991 to 1987-89 and to foreign tax credit carrybacks from
1990 to 1987 and 1988.
These adjustments are computational,
arising from income adjustments for 1990 and 1991.
Introduction
Petitioner develops, produces, and markets computer software.
During
1990
and
1991,
petitioner
engaged
its
wholly
owned
subsidiary, Microsoft FSC Corp. (MS-FSC), to act as its agent for
the international sales of standardized mass-marketed computer
products and computer software masters.1
These products were
sold/licensed
foreign
to
petitioner’s
controlled
corporations
(CFC’s) and unrelated foreign original equipment manufacturers
(foreign OEM’s).
1
Pursuant to the foreign sales corporation provisions
(secs. 921 through 927), a domestic corporation may receive
favorable tax treatment on a portion of its profits from
international sales of its U.S.-made products by selling/leasing
such products through a foreign corporate subsidiary (the foreign
sales corporation). Specifically,
(1) That portion of the foreign sales corporation’s income
(known as exempt foreign trade income) is not subject to U.S.
taxation in the hands of the foreign sales corporation;
(2) the domestic corporation may deduct the commission paid
to the foreign sales corporation based upon the amount the
foreign sales corporation reports as foreign trade gross receipts
(using certain administrative pricing rules); and
(3) the domestic corporation can exclude dividend
distributions from its foreign subsidiary (e.g., the foreign
sales corporation) that are attributable to the foreign sales
corporation’s exempt foreign trade income.
- 4 Pursuant
to
the
licensing
agreements
with
the
CFC’s,
petitioner earned a royalty based upon a percentage of the CFC’s
revenues from the sale of the licensed software products. Pursuant
to the licensing agreements with the foreign OEM’s, petitioner
earned a royalty equal to the greater of the OEM’s computer systems
sales or copies of the computer software products distributed.
MS-FSC
reported
the
royalties
as
foreign
trading
gross
receipts (FTGR’s). Petitioner paid MS-FSC a commission (based upon
the amount MS-FSC reported as FTGR’s) and deducted the foreign
sales
corporation
(FSC)
commission,
using
the
applicable
administrative pricing rules.
It is the aforementioned royalties and FSC commissions that
are at issue, namely:
1990
1991
$155,784,783
$150,349,955
11,477,502
5,019,782
Royalties--CFC’s
FSC commissions per
return
55,817,274
112,887,716
4,948,544
10,321,015
Additional Irish royalties
Additional FSC commissions
per petition
12,669,936
16,816,754
2,914,085
3,867,853
Royalties--foreign OEM’s
FSC commissions per
return
Respondent
nonqualifying
determined
FTGR’s.
As
that
a
the
disputed
royalties
were
result,
respondent
disallowed
FSC
commission deductions of $16,426,046 for 1990 (i.e., $11,477,502 +
$4,948,544)
and
$15,340,797
for
1991
(i.e.,
$5,019,782
+
- 5 $10,321,015), which petitioner claimed in connection with its
computer
software
masters
exported
for
reproduction
and
distribution abroad.
Petitioner
also
claimed
FSC
commission
deductions
of
$4,049,134 for 1990 and $13,625,222 for 1991 with respect to its
export sales of standardized software products.
Respondent has
allowed these deductions.
The dispositive issue to be resolved is whether the royalties
attributable to the licensees’ reproduction and distribution of
petitioner’s computer software masters outside the United States
constitute FTGR’s within the purview of section 924. Resolution of
this issue hinges upon whether the licensed computer software
masters constitute “export property” within the meaning of section
927(a)(1) and the temporary regulations thereunder.
Unless otherwise indicated, all section references are to the
Internal Revenue Code in effect for the years in issue.
All Rule
references are to the Tax Court Rules of Practice and Procedure.
FINDINGS OF FACT
Some
of
accordingly.
the
facts
have
been
stipulated
and
are
found
The stipulations of facts and the attached exhibits
are incorporated herein by this reference.
A.
Background
Petitioner, a Washington corporation, maintained its principal
place of business in Redmond, Washington, at the time the petition
- 6 was filed.
It was the common parent of an affiliated group of
corporations, which filed consolidated Forms 1120, U.S. Corporation
Income Tax Return, for 1987, 1988, 1989, 1990, and 1991.
During the years in issue, petitioner conducted its business
through several operating groups:
Systems software, applications
software, systems peripherals and accessories group, OEM sales,
U.S. sales and marketing, international operations, and press.
Approximately
three-quarters
of
petitioner’s
worldwide
employees were based in Redmond, where petitioner developed its
products.
B.
MS-FSC
MS-FSC was organized as a Virgin Islands corporation on
December 24, 1984.
On January 1, 1985, petitioner and MS-FSC
entered into a Commission and Expense Agreement, which remained in
effect during the years in issue.
At all relevant times, MS-FSC
elected to be taxed as a foreign sales corporation and was so
qualified.
MS-FSC determined its commission income using section
925(a) administrative pricing rules.
C.
Petitioner’s Products
Petitioner’s first products were programming languages and
tools
that
software.
permitted
software
developers
to
create
computer
Thereafter, petitioner’s product line was expanded to
include operating systems.
In 1981, petitioner released its first
operating system, “Microsoft Disk Operating System” or “MS-DOS”,
- 7 for International Business Machine’s (IBM’s) first microcomputer.
MS-DOS was the operating system used on a majority of IBM’s
personal
computers
and
IBM-compatible
personal
computers.
Petitioner (MS-DOS), IBM (PC-DOS or IBM-DOS), Digital Research (DRDOS), and other companies marketed a disk operating system (DOS)
under various names.
DOS was a text or character-based system; it
required computer users to input words or characters to give the
computer commands.
Since 1981, operating systems software has
continually
to
evolved
permit
computer
users
to
accomplish
increasingly diverse and complex tasks on computers.
In addition to MS-DOS, petitioner marketed other proprietary
operating systems during the years at issue, such as “Microsoft
Windows”, “Microsoft LAN Manager”, and “XENIX”. At that time, MSDOS accounted for the largest number of Microsoft operating system
units distributed; Microsoft Windows was second.
In the early 1980's, petitioner also began to develop and
market application software products in order to increase the
appeal of the microcomputer. Petitioner’s applications included
word processing (e.g., “Microsoft Word”), spreadsheet computations
(e.g., “Microsoft Excel”), graphics (e.g., “Microsoft PowerPoint”),
and video games (e.g., “Microsoft Flight Simulator”).
In 1990 and
1991, petitioner offered a wide line of application software
products.
- 8 Petitioner
facilities.
created
its
software
products
at
its
Redmond
It took 25 to several hundred persons to develop a
computer software product (i.e., Microsoft Windows or Microsoft
Excel).
Petitioner’s product development, which could take up to 3
years, involved three phases: (1) Product planning, during which a
functional specification and final schedule were prepared (3-12
months); (2) product development, during which the source code was
completed (and was further revised in the next phase) (6-12 months);
and (3) product stabilization, during which a gold master was
produced and the software product was released for duplication (3-8
months).
D.
Production of Masters for Export
From an American-made gold master, petitioner’s product release
services group (PRS) in Redmond produced master copies of the
software and related documentation for distribution to petitioner’s
Canyon Park facility, the foreign OEM’s, and the CFC’s.
These
masters contained object code for computer programs and related data
files.
Petitioner’s PRS duplicated the masters on various media,
depending upon the size of the particular software product and the
distribution channel.
Petitioner’s products used magnetic tape for masters provided
to the foreign OEM’s.
Specifically, during the years in issue, PRS
provided masters to the foreign OEM’s on .25-inch magnetic tapes,
- 9 5.25-inch diskettes, and 3.5-inch diskettes.
The software masters remained petitioner’s property and were
unavailable for distribution to third parties.
After petitioner
provided the foreign OEM or CFC with a software master, the licensee
stored the information on a network computer and archived the master
for security or production purposes.
the
licensee’s
duplication
Upon transfer to the network,
equipment
accessed
the
digital
software
products
information to initiate duplication runs.
E.
Petitioner’s Export Transactions
Petitioner
distributed
its
computer
worldwide. In connection with its sales abroad, petitioner used two
types of channels: (1) The foreign OEM channel, and
international retail channel.
(2)
the
The products distributed through
these channels were duplicated both in the United States and abroad.
Petitioner’s international revenues (from both the foreign OEM and
retail channels) constituted 54.9 percent of petitioner’s total
revenues for 1990 and 57.3 percent for 1991.
F.
Foreign OEM Channel
Petitioner’s
foreign
OEM
channel
consisted
of
computer
manufacturers that installed petitioner’s software directly into the
hard drive of a computer and/or “bundled” software-encoded media
along with the computer. The foreign OEM’s distributed petitioner’s
computer software as a component of their own computer systems.
- 10 In 1990 and 1991, approximately 500 foreign OEM’s distributed
petitioner’s software products.
Operating systems constituted the
bulk of these products.
During these years, approximately 250 foreign OEM’s paid
royalties to petitioner pursuant to the OEM agreements.
The top 10
products licensed to the foreign OEM’s (ranked in terms of royalties
petitioner accrued) were as follows:
1991
1990
Product
MS-DOS
GW-Basic Interpreter
Windows
Windows 386
OS/2
Shell/DOS
MS-Works
LAN Manager
Networks
Basic Interpreter
Units
Revenue
Units
7,079,682
941,064
760,961
226,552
22,128
929,728
154,732
2,942
86,562
176,279
$96,742,734
6,882,172
5,779,208
4,114,398
2,784,467
2,359,430
2,054,785
1,612,589
1,083,822
994,132
7,726,513
762,623
1,686,907
38,580
151,267
188,846
364,822
4,299
171,035
60,154
Revenue
$116,463,986
12,535,546
4,378,615
4,227,137
2,790,240
2,759,226
2,733,731
1,828,122
1,534,083
1,427,047
These products represented approximately 75 percent of petitioner’s
foreign OEM licensing revenues for 1990 and approximately 84 percent
for 1991.
During 1990 and 1991, petitioner also licensed applications and
other software products to the foreign OEM’s.
G.
Standard OEM License Agreement
Petitioner’s OEM business personnel and legal staff drafted a
standard
(exemplar)
OEM
license
agreement
(the
standard
OEM
agreement) as the basis for negotiating licenses with the foreign
OEM’s. The standard OEM agreement was the starting point from which
negotiations ensued.
- 11 Whether a foreign OEM and petitioner entered into a license
agreement or a distribution agreement depended upon several factors,
such as the foreign OEM’s projected volume of computer sales, the
size
of
the
market
for
a
particular
software
product,
and
petitioner’s confidence in the foreign OEM’s trustworthiness and
recordkeeping.
Pertinent provisions of the standard OEM agreement
include the following provisions:
2.
LICENSE GRANT
(a) MS [Microsoft] grants to COMPANY [licensee] the
following nonexclusive, worldwide license rights:
(i)
to adapt the Product as necessary
to enable it to execute on COMPANY’s Customer
System(s);
(ii)
to reproduce and manufacture the
Product in object code form; and
(iii)
to distribute directly or
indirectly and license the Product in object
code form to end users, under the terms of
COMPANY’s end user license agreement.
All rights not expressly granted, including without
limitation translation rights, are reserved by MS.
*
7.
*
*
*
*
*
*
COPYRIGHT NOTICES; TRADEMARKS
(a) COMPANY will cause to appear on the container
and labels of each copy of Product, the copyright and
patent notices for the Product that appear on the
applicable release of the Product as provided to COMPANY
pursuant to Section 2 hereof * * *
(b) COMPANY shall market the Product only under the
Product name(s) for such Product as specified * * * and
COMPANY agrees to use the appropriate trademark symbol *
* * and clearly indicate MS’ ownership of its
- 12 trademark(s) whenever the Product name is first mentioned
in any advertisement, brochure or in any other manner in
connection with the Product. COMPANY’s name and/or
trademarks shall not be displayed in relation to the
Product name in a manner which suggests that COMPANY’s
name and/or trademarks are part of the Product name.
COMPANY agrees to maintain the high level of quality
accorded products associated with and marketed by MS
under MS’ trademarks. COMPANY shall not use or display
any MS logo in its materials or packaging without MS’
prior written permission.
COMPANY shall not use or
imitate the trade dress of MS products. COMPANY’s name
and/or trademarks shall be displayed on the packaging and
disk labels for the Product at least as prominently as
the name “Microsoft.” Upon request, COMPANY shall submit
the Product in proposed finished goods form (including
software and documentation) to MS for approval prior to
distribution, which approval shall not be unreasonably
withheld.
COMPANY shall, upon request, provide MS
samples of all COMPANY literature which uses Product
name(s). COMPANY shall provide MS with five (5) copies
of the Product in finished goods form.
*
13.
*
*
*
*
*
*
NONDISCLOSURE AGREEMENT
COMPANY expressly undertakes to retain in confidence and
to require its distributors to retain in confidence all
information and know how transmitted to COMPANY by MS
that MS has identified as being proprietary and/or
confidential or that, by the nature of the circumstances
surrounding the disclosure, ought in good faith to be
treated as proprietary and/or confidential, and will make
no use of such information and know-how except under the
terms and during the existence of this Agreement.
However, COMPANY shall have no obligation to maintain the
confidentiality of information that (i) it received
rightfully from another party prior to its receipt from
MS; (ii) MS has disclosed to a third party without any
obligation to maintain such information in confidence; or
(iii) is independently developed by COMPANY. Further,
COMPANY may disclose confidential information as required
by governmental or judicial order, provided COMPANY gives
MS prompt notice of such order and complies with any
protective order (or equivalent) imposed on such
disclosure. COMPANY shall treat all Product adaptation
materials (including source code) as confidential
- 13 information and shall not disclose, disseminate or
distribute such materials to any third party without MS’
prior written permission. COMPANY shall treat the terms
and conditions of this Agreement as confidential;
however, COMPANY may disclose such information in
confidence to its immediate legal and financial
consultants as required in the ordinary course of
COMPANY’s business.
COMPANY’S obligation under this
Section 13 shall extend to the earlier of such time as
the information protected hereby is in the public domain
through no fault of COMPANY or ten (10) years following
termination or expiration of this Agreement.
*
16.
*
*
*
*
*
*
CONTROLLING LAW; NO FRANCHISE
(a) This
Agreement
shall
be
construed
and
controlled by the laws of the State of Washington, and
COMPANY consents to jurisdiction and venue in the state
and federal courts sitting in the State of Washington. *
* *
*
18.
*
*
*
*
*
*
*
*
*
*
*
*
GENERAL
*
(f) The Section headings used in this Agreement and
the attached Exhibits are intended for convenience only
and shall not be deemed to supersede or modify any
provisions.
The OEM agreements granted the licensee the right to modify,
reproduce, and distribute the licensed software (and derivative
work) on or with the foreign OEM’s hardware systems specified in
each agreement.
The royalties at issue were paid as consideration
pursuant to these agreements, which computed the royalty on a “per
copy” or “per system” basis.
The foreign OEM’s paid a royalty for
each copy of the copyrighted work duplicated and distributed in the
- 14 market, or for each computer system manufactured and sold by the
foreign OEM’s.
The OEM agreements required the foreign OEM’s to make minimum
commitment payments quarterly.
To the extent earned royalties
exceeded the cumulative minimum commitment payments, the foreign
OEM’s were required to pay petitioner for actual earned royalties.
To the extent cumulative minimum commitment payments exceeded actual
earned royalties, the excess was considered prepaid royalties and
was recoupable against future earned royalties during the term of
the license agreement.
The standard OEM agreement was for a 2-year term.
The foreign
OEM’s generally extended their relationship with petitioner by
entering into subsequent agreements licensing later releases and
versions of the same software.
The proprietary information petitioner transferred to the
foreign
OEM’s
(pursuant
to
the
standard
OEM
agreement)
was
maintained as a trade secret. The parties have stipulated that this
proprietary information included algorithms, processes, formulas,
and designs.
The foreign OEM’s could also license petitioner’s source code
for specific products pursuant to a separate, royalty-bearing
license arrangement (source code license).
A source code license
authorized the foreign OEM to use the source code solely for
- 15 “internal use” in furtherance of its license to adapt, reproduce,
and distribute the computer software in object code form. Pertinent
provisions of the source code license are as follows:
19.
LICENSE GRANT FOR SOURCE CODE
(a) MS grants to COMPANY a nonexclusive, personal,
nontransferable, nonassignable license during the term of
the Agreement to use and modify the source codes of the
Products (“Source Code”) * * *
(b) The license granted hereunder shall extend to
the Source Code for any new releases to each Product as
are supplied by MS and accepted by COMPANY. * * *
(c) COMPANY hereby conveys to MS all right, title
and interest to any modifications made to the Source Code
by COMPANY. MS grants to COMPANY non-exclusive marketing
and distribution rights to the object code version of any
modifications made to the Source Code by COMPANY * * *
(d) Notwithstanding anything to the contrary
contained herein, COMPANY shall not reproduce, duplicate,
copy or otherwise disclose, distribute or disseminate
Source Code (code or listing) in any media except for
COMPANY’s own internal use by COMPANY’S full-time
employees on a need-to-know basis on COMPANY premises. *
* *
The foreign OEM’s paid royalties for the source code in addition to
other royalty payments.
In some instances, petitioner provided a foreign OEM with an
OEM adaptation kit (OAK), which contained a copy of the product’s
object code, sample adaptation code, and related documentation.
An
OAK assisted foreign OEM’s to adapt operating systems to personal
computers.
Whether a foreign OEM needed the adaptation code
depended on its particular computers.
- 16 H.
International Retail Channel
In 1990 and 1991, petitioner exported shrink-wrapped software2
products (made in the United States) to its CFC’s for distribution
to end users outside the United States.
In addition, petitioner
licensed its CFC’s the rights to duplicate and distribute shrinkwrapped software packages outside the United States pursuant to CFC
(or product localization) agreements.
In most instances, the CFC’s
localized petitioner’s software and then manufactured copies of the
localized software for distribution as shrink-wrapped products.
The CFC’s in Ireland (Microsoft Ireland), Japan (Microsoft
Japan), Korea (Microsoft Korea), and Taiwan (Microsoft Taiwan)
reproduced, packaged, and distributed retail products
for
the
international retail channel, as well as white box products for the
international OEM channel.
(A “retail” product consisted of an
individual copy of the software marketed in a decorative retail box
(shrink-wrapped software), containing software-loaded storage media,
user manuals, and other documentation.
A “white box” product
consisted
product
of
software-loaded
media
and
documentation
packaged in a plain white box, intended to deter separate retail
sales by a foreign OEM.) Microsoft Ireland manufactured both retail
2
Shrink-wrap packaging consisted of packing the
software-loaded diskettes with manuals and other printed
materials in shrink-wrapped boxes bearing graphics, product
information, trademark registrations, trade names, and other
trade dress. The warehousing operation consisted of storing and
shipping the shrink-wrapped software packages.
- 17 and white box products from masters petitioner supplied.
Microsoft
Japan, Microsoft Taiwan, and Microsoft Korea used subcontractors to
duplicate and distribute both retail and white box products.
The CFC agreements with Microsoft Taiwan, Microsoft Korea, and
Microsoft Japan imposed a mandatory trademark branding requirement
on the CFC’s.
The CFC agreements with Microsoft Ireland included
an express trademark license.
Petitioner generally sent the master diskettes to the CFC’s
containing object code for the licensed retail products.
Similar
to the OEM agreements, the CFC agreements imposed obligations on the
CFC’s
to
maintain
in
confidence
all
trade
secret
information
petitioner provided.
Pursuant to the CFC agreements, petitioner ultimately received
royalties from the CFC’s.
MS-FSC reported the royalties on its
returns as FTGRs from transactions in qualifying export property.
The royalties in dispute are those received from Microsoft Japan,
Microsoft Korea, Microsoft Ireland, and Microsoft Taiwan in 1990 and
1991, paid
pursuant to the CFC agreements.
During the years in
issue, Microsoft Ireland accounted for approximately 85 percent of
petitioner’s royalty accruals from the CFC’s.
Petitioner did not allocate or apportion the royalty stream
from
the
CFC’s
and
OEM’s
among
intellectual
property
rights.
Respondent determined that the royalties petitioner accrued from its
export licensing transactions were not FTGR’s on the basis that the
- 18 royalty income did not arise from transactions in export property
(i.e., the income arose from disqualified intangibles).
OPINION
A.
The Statutes
In 1971, Congress enacted the domestic international sales
corporation (DISC) provisions (sections 991 through 997), see
Revenue Act of 1971, Pub. L. 92-178, sec. 501, 85 Stat. 497, 535,
to provide an export tax incentive to U.S. businesses and to improve
the country’s balance of payments, see S. Rept. 92-437, at 90
(1971), 1972-1 C.B. 559, 609.
The DISC provisions attempted to
equalize tax treatment between U.S. companies that sold goods in
foreign markets regardless of whether the goods were made in the
United States.
These provisions allowed domestic corporations to
defer taxes on a substantial portion of profits from export sales
(similar to the tax benefits available to corporations manufacturing
abroad through foreign subsidiaries).
See H. Rept. 92-533, at 58
(1971), 1972-1 C.B. 498, 529; S. Rept. 92-437, supra at 90, 1972-1
C.B. at 609.
In 1984, Congress supplemented the DISC provisions with the
foreign sales corporation (FSC) provisions (sections 921 through
927), see Deficit Reduction Act of 1984, Pub. L. 98-369, sec. 801,
98 Stat. 494, 985, in order to comply with the General Agreement on
Tariffs and Trade, see S. Prt. 98-169 (Vol. I), at 635 (Comm. Print
1984). Under the FSC provisions, a taxpayer may permanently exclude
- 19 from Federal income tax a portion of its profits from qualifying
export sales.3
Both the DISC and the FSC provisions reallocate a portion of
a U.S. company’s profits attributable to its export of American-made
products.
The proper amount of the reallocation for 1990 and 1991
is in controversy.
Only activities that generate FTGR’s qualify for FSC benefits.
FTGR’s are the gross receipts of an FSC that are:
(1) from the sale, exchange, or other disposition
of export property,
(2) from the lease or rental of export property for
use by the lessee outside the United States,
(3)
for services which are related and subsidiary
to–-
3
On Feb. 24, 2000, the World Trade Organization (WTO)
appellate body upheld an October 1999 WTO panel ruling that the
U.S. foreign sales corporation (FSC) tax regime is essentially an
export subsidy in contravention of WTO rules. The panel
recommended that the United States comply with the WTO ruling by
Oct. 1, 2000, or face the prospect of European Union retaliation.
In May 2000, the United States proposed to the European
Union an FSC replacement system, with tax benefits generally
applying to foreign income from all foreign sales, rentals, and
leases, regardless of whether goods are manufactured in the
United States or abroad. The European Union rejected this
proposal, maintaining that the system would continue to make tax
benefits contingent upon exports.
As of the release date of this Opinion, H.R. 4986, 106th
Cong., 2d Sess. (2000), the FSC Repeal and Extraterritorial
Income Exclusion Act of 2000, is under consideration in order to
bring the U.S. export tax regime into conformity with the WTO
ruling.
- 20 (A) any
sale,
exchange,
or
other
disposition
of
export
property
by
such
corporation, or
(B) any lease or rental of export
property described in paragraph (2) by such
corporation,
(4) for engineering or architectural services for
construction projects located (or proposed for location)
outside the United States, or
(5) for the performance of managerial services for
an unrelated FSC or DISC in furtherance of the production
of foreign trading gross receipts described in paragraph
(1), (2), or (3).
Sec. 924(a).
The
FSC
and
DISC
provisions
define
“export
property”
as
property “manufactured, produced, grown, or extracted in the United
States”.4
Secs.
927(a)(1)(A),
993(c)(1)(A).
However,
export
property does not include:
patents, inventions, models, designs, formulas,
or
processes,
whether
or
not
patented,
copyrights (other than films, tapes, records,
or similar reproductions, for commercial or
home use), good will, trademarks, trade brands,
franchises, or other like property.
Secs. 927(a)(2)(B), 993(c)(2)(B). These sections expressly exclude
intangible property from the definition of export property. The
parenthetical phrase “other than films, tapes, records, or similar
reproductions, for commercial or home use” (the parenthetical)
4
The parties have stipulated that for purposes of this
case, petitioner’s software development in the United States
satisfied the manufacture or production requirement of sec.
927(a)(1)(A).
- 21 limits the unfavorable treatment with regard to copyrights.5
B.
The Regulations
Section 1.993-3(f)(3), Income Tax Regs., T.D. 7514, 1977-2 C.B.
266, was issued on October 14, 1977,6 excluding copyrights in books
from export property treatment.
Section 1.993-3(f)(3), Income Tax
Regs., provides:
(3) Intangible property. Export property
does not include any patent, invention, model,
design, formula, or process, whether or not
patented, or any copyright (other than films,
tapes, records, or similar reproductions, for
commercial or home use), goodwill, trademark,
tradebrand, franchise, or other like property.
Although a copyright such as a copyright on a
book does not constitute export property, a
5
The Taxpayer Relief Act of 1997, Pub. L. 105-34, sec.
1171, 111 Stat. 788, 987, amended sec. 927(a)(2)(B). As a
result, copyrights of computer software are explicitly referred
to as not being excluded property (i.e., such copyrights qualify
as export property). The amendment applies to gross receipts
from computer software licenses attributable to periods after
1997, in tax years ending after Dec. 31, 1997.
The conference report accompanying the Taxpayer Relief Act
of 1997 states that no inference is intended as to the
qualification of computer software licensed for reproduction
abroad as export property under the pre-1997 law. See H. Conf.
Rept. 105-220, at 636 (1997), 1997-4 C.B. (Vol. 2) 1457, 2106.
In reaching our conclusions, we have adhered to this
pronouncement.
6
On Oct. 12, 1977 (2 days before sec. 1.993-3(f)(3),
Income Tax Regs., was issued), the Acting Commissioner of the
Internal Revenue Service sent a memorandum to the Assistant
Secretary of the Treasury recommending approval of sec. 1.9933(f)(3), Income Tax Regs., and attached a technical memorandum in
support thereof. The technical memorandum recognized that:
(1) The parenthetical described a limited category of copyright
rights; and (2) sound recording copyrights fell within the
limited category of copyrights saved by the parenthetical.
- 22 copyrighted article (such as a book) if not
accompanied by a right to reproduce it is
export property if the requirements of this
section are otherwise satisfied.
However, a
license of a master recording tape for
reproduction outside the United States is not
disqualified under this subparagraph from being
export property.
Section 1.993-3(f)(3), Income Tax Regs., does not explicitly
refer to computer software.
Consequently, the Commissioner’s
position with respect to whether computer software qualifies as
export property for DISC purposes was later expressed through the
following pronouncements:
(1) Gen. Couns. Mem. (GCM) 39,449 (Feb.
17,
that
1983),
concluded
mass-marketed
software
without
reproduction rights may qualify as export property under the DISC
rules as being akin to a copyrighted book; (2) Tech. Adv. Mem. (TAM)
85-49-003 (Aug. 16, 1985), concluded that standardized, massmarketed computer software without reproduction rights is section
993(c) export property; and (3) Priv. Ltr. Rul. (PLR) 86-52-001
(Sept. 3, 1986), concluded that exported computer software updates
that were not copyrighted would qualify for DISC benefits because
the property was sold without reproduction rights.
(We recognize
that GCM’s, TAM’s, and PLR’s do not have the force of law and are
not binding on us.
We mention these pronouncements merely to show
the manner in which the Commissioner interpreted and/or applied the
regulations.)
- 23 On March 3, 1987, the Secretary promulgated section 1.927(a)1T(f)(3), Temporary Income Tax Regs., 52 Fed. Reg. 6463 (Mar. 3,
1987) (the temporary regulation), effective for taxable years
beginning after December 31, 1984.
The preamble to the temporary
regulation states, in relevant part:
Section 1.927(a)-1T provides definitions
of export property for purposes of the FSC
rules. These definitions parallel in all
important respects the definitions of export
property of a DISC at §1.993-3. These
regulations at §1.927(a)-1T(f)(3) provide that
export
property
will
include
certain
standardized computer software on media that
are
mass-marketed
without
the
right
to
reproduce for external use. * * * [Emphasis
added.]
52 Fed. Reg. 6433.
The temporary regulation provides:
(3) Intangible property. Export property
does not include any patent, invention, model,
design, formula, or process, whether or not
patented, or any copyright (other than films,
tapes, records, or similar reproductions, for
commercial or home use), goodwill, trademark,
tradebrand, franchise, or other like property.
Although a copyright such as copyright on a
book or computer software does not constitute
export property, a copyrighted article (such as
a book or standardized, mass marketed computer
software) if not accompanied by a right to
reproduce for external use is export property
if the requirements of this section are
otherwise
satisfied.
Computer
software
referred to in the preceding sentence may be on
any medium, including, but not limited to,
magnetic tape, punched cards, disks, semiconductor chips and circuit boards.
A license
of a master recording tape for reproduction
outside the United States is not disqualified
- 24 under
this
property.
paragraph
from
being
export
(The emphasized portions reflect additions or changes from the
language of section 1.993-3(f)(3), Income Tax Regs.)
Following the promulgation of the temporary regulation, the
Commissioner issued the following: (1) PLR 92-100-15 (Mar. 6, 1992)
concluded that even though the software therein was not subject to
a
copyright,
the
license
agreement
restricted
its
use
and
reproduction, qualifying it as export property; (2) PLR 93-440-02
(May 27, 1993) concluded that a master computer disk provided to
distributors, accompanied by a right to reproduce, is not export
property; also, “tapes” in the parenthetical refers to audio or
video tapes used in the entertainment industry and does not apply
to magnetic tapes used in the computer software industry; and (3)
TAM 93-44-002 (May 27, 1993) concluded that “computer software
conveyed through a licensing agreement that gives the licensee the
right to reproduce the software is excluded from the term ‘export
property’”.
Also, the technical advice memorandum reflected that
the temporary regulation limited the reproduction exclusion of
section
927(a)(2)(B)
to
reproductions
used
solely
entertainment industry, stating, in relevant part:
The parenthetical exception in section
927(a)(2)(B) of the Code and section 1.927(a)1T(f)(3) of the regulations, which is identical
to and based on the parenthetical exception in
section 993(c)(2)(B) should also be interpreted
to include only audio or video tapes used in
the entertainment industry and not magnetic
computer software tapes.
in
the
- 25 C.
Industry Position
Before enacting the FSC regime, the Senate Finance Committee
received written submissions and held hearings on February 3, 1984.
See Hearings on S. 1804 Before the Senate Comm. on Finance, 98th
Cong., 2d Sess., Part 2 of 2 (1984).
Representatives from the
software industry testified that the DISC provisions were unclear
as to the treatment of exported computer software copyrights.
In
this regard, Gerald K. Howard, vice president for taxes, Sperry
Corp. (representing several computer, business, and electronics
associations), stated:
we ask that a DISC rule that has caused us some
difficulty in the past be modified or clarified, namely
that * * * the definition of qualified export property be
revised to include software. We believe that this will
assist in eliminating the uncertainty that exists in the
tax law concerning software. * * *
We don’t believe it was intended for the high
technology industry to suffer a decrease in the tax
incentives that are provided and we ask that software be
included in the definition of export property. * * *
[Emphasis added.]
Id. at 123.
The software industry’s request went unheeded.
In 1993, software industry representatives again attempted to
convince Congress to amend the FSC rules to “clarify” that exports
of software qualify for FSC benefits that are available to other
exports.
Legislation to make such “clarification” was introduced.
Hearings on H.R. 63 Before Subcomm. on Select Revenue Measures,
House Ways and Means Comm., 103d Cong.,
1st
Sess.,
Part
1 of 3
- 26 (1993).
A
software
industry
representative
summarized
the
industry’s position as follows:
The failure to permit exports of computer
software to qualify for FSC treatment is
counterproductive and inconsistent with the U.S.
interest in fostering the continued growth of
this industry in the United States.
In
addition, there is no tax policy reason for
denying exporters of software the tax benefits
of the FSC rules that are available to other
U.S. exporters and in particular the film and
record industries * * *. There is a need for
Congress to clarify the original intent of the
DISC and FSC legislation to encourage U.S.
exports, including software, in light of the
Treasury Department’s temporary FSC regulations.
Therefore, we respectfully request that Congress
enact legislation which would clarify that the
definition of FSC export property includes the
license of computer software to foreign
distributors and customers with the right to
reproduce.
Id. at 644 (statement by James A. Abrahamson, chairman of the board,
Oracle
Corp.,
addition,
the
on
behalf
of
the
representative
FSC
software
complained
that
coalition).
the
In
temporary
regulation “adopted a narrow interpretation of the parenthetical
exception and denied any FSC benefits for the license of computer
software if the license is accompanied by the right to reproduce the
computer software.”
Id. at 643.
These hearings did not result in
a change to section 927(a)(2)(B).
Over the next several years, over 100 members of Congress
requested that the Department of the Treasury amend the temporary
regulation to explicitly extend FSC benefits to the export of
computer software licenses that include reproduction rights abroad.
- 27 See
141 Cong.
Rec.
S16,086-S16,087
(daily
ed.
Oct.
27,
1995)
(statement of Sen. Hatch); 140 Cong. Rec. H3428 (daily ed. May 17,
1994) (statement of Rep. Lantos).
maintained
The Department of the Treasury
that an “expansion” of the scope of the FSC rules
required legislative action.
140 Cong. Rec. H3428 (daily ed. May
17, 1994) (letter from Secretary of the Treasury Bentsen to Rep.
Lantos (May 6, 1994)).
Legislation was introduced to expressly
include the sale or licensing of computer software for use outside
the United States, even when accompanied by a right to reproduce,
within the definition of FSC export property.
See 141 Cong. Rec.
S16,086-S16,087 (daily ed. Oct. 27, 1995). This legislation was not
enacted; thus, section 927(a)(2)(B) remained intact.
D.
The Parties’ Positions
The threshold question before us is whether copyrights in
computer software fall within the parenthetical.
According to
respondent:
The parenthetical describes the narrow
subset of copyright rights that Congress
intended to “save” from the general rule
excluding intangibles from export property. The
parenthetical describes only copyright rights in
motion pictures and sound recordings. The
parenthetical was not intended to, and does not,
refer to copyrights fixed on various media
without regard to the nature of the copyrighted
content.
Thus,
respondent
maintains
that
“the
parenthetical
refers
to
particular kinds of content fixed on the media that are mentioned in
the parenthetical, and any similar media that might be invented in
- 28 the
future.”
Reading
the
statute
in
a
restrictive
manner,
respondent reasons that “The phrase ‘similar reproductions’ means
similar content on other media, not simply any content on similar
media.”
Respondent maintains that regardless of the medium upon
which it is fixed, computer software is neither a motion picture nor
a
sound
recording.
According
to
respondent,
a
computer’s
functionality distinguishes computer software from motion pictures
and sound recordings.
On the other hand, petitioner maintains that computer software
masters are the same as or similar to motion pictures and sound
recording masters.
Thus, petitioner asserts that the software
masters are “similar reproductions” to motion pictures and sound
recordings.
Specifically, petitioner claims:
“films, tapes, records” as used in section
927(a)(2)(B) denote tangible media on which
images, sounds, and/or other information is
recorded and stored.
These media differ in
terms of their specific physical attributes
(e.g., a strip of photosensitive cellulose
acetate, a plastic strip coated with magnetic
powder, a spiral grooved disc). All three types
of media, however, require a machine to read
back the recorded content to the consumer or end
user. In other words, they are inherently and
necessarily machine-readable media.
Continuing,
petitioner
posits
that
the
phrase
“similar
reproductions” (within the purview of the parenthetical) refers to
- 29 copyrighted work distributed on machine-readable media, existing or
emergent, in addition to “films, tapes, and records”.
To
restate
the
parties’
positions:
in
concluding
that
copyrights in computer software do not constitute export property,
respondent asserts that “films, tapes, and records” are contentspecific and that “similar reproductions” refers to “films, tapes,
and
records”
on
media
that
might
be
invented
in
the
future.
Conversely, in concluding that copyrights in computer software
constitute export property, petitioner asserts that “films, tapes,
and records” are media-specific, denoting the tangible media upon
which images, sounds, and/or other information is recorded and
stored, and that “similar reproductions” means any information that
can be recorded on a recording medium (such as reel-to-reel films,
Betamax or VHS videocassettes, DVD’s, vinyl records, reel-to-reel
tapes, 8-track tapes, cassette tapes, diskettes, hard disk drives,
and CD’s).
E.
Analysis
1.
Statutes
As a general rule, patents, inventions, copyrights, and other
intangibles are not granted export property treatment for purposes
of
FSC
benefits;
927(a)(2)(B).
We
rather,
they
are
“excluded
believe
the
exception
property”.
(contained
in
Sec.
the
parenthetical) to this general rule should be narrowly interpreted.
- 30 In our opinion, the parenthetical refers to specific kinds of
content, not any content placed on machine-readable media, as
petitioner maintains.
When section 993(c)(2)(B) was enacted in
1971, no one could foresee the future media on which films and sound
recordings might be distributed.
Because of this unknown, Congress
included the phrase “similar reproductions” in the parenthetical.
“Reproduction” is an exact copy of particular preexisting
content fixed on a medium. Blank tapes are not reproductions of each
other (but are manufactured).
media.
Copyright concerns content, not
Indeed, a copyright is defined as “A property right in an
original work of authorship (such as a literary, musical, artistic,
photographic,
or
film
work)
fixed
in
any
tangible
medium
of
expression, giving the holder the exclusive right to reproduce,
adapt, distribute, perform, and display the work.”
Black’s Law
Dictionary 337 (7th ed. 1999); see 17 U.S.C. sec. 102(a) (1988).
Clearly,
petitioner
does
more
than
distribute
blank
tapes;
petitioner’s products are sold because of the content on the medium.
Were
“similar
we
to
accept
reproductions”
petitioner’s
covers
all
broad
content
interpretation
on
that
machine-readable
media, then revenues from the sale or lease of copyrights in
practically all products (existing and yet to be invented) would
qualify for FSC benefits.
The
only
copyrights
Congress
affirmatively
identified
as
qualifying for export property treatment were copyrights in motion
- 31 pictures and sound recordings when it enacted section 993(c)(2)(B)
(relating to DISCs) in 1971 and section 927(a)(2)(B) (relating to
FSC’s) in 1984.
The parenthetical in both sections does not
explicitly refer to computer software masters.
Computer
functions.
software
Operating
causes
systems
a
computer
software
to
makes
perform
a
countless
general-purpose
computer function by controlling (1) the operation of the computer’s
hardware components, (2) the execution of applications, (3) the
sequencing of tasks, and (4) the flow of information within the
computer
system.
components
of
a
When
combined
computer
system,
with
data
computer
and
the
software
hardware
enables
a
computer to enter, store, process, and display information, thereby
performing specific tasks.
function.
Without software, computers cannot
To illustrate, if an audio CD is placed in the CD drive
of a personal computer, it can be played only if a computer program
has been loaded into the computer that instructs the computer how to
play the CD.
An audio CD does not make the computer function; the
computer software does.
Removal of the audio CD does not remove the
ability of the computer to play a different audio CD.
Yet if the
software is not installed, the audio CD cannot be played.
Unlike software, motion pictures and sound recordings do not
cause a computer to function.
They are played on machines designed
to
cause
play
them (but
do
not
the
machine
to
function).
- 32 The mere fact that sound or video recordings can be digitally
represented does not transform them into computer software.
Computer
pictures
software
and
sound
is
fundamentally
recordings.
different
Within
the
from
purview
motion
of
the
parenthetical, (1) “films, tapes, and records” are content specific,
and
(2)
“similar
reproductions”
refers
to
“films,
tapes,
records” on media that might be invented in the future.
and
In sum, we
hold that copyrights in computer software do not constitute section
927(a) “export property”.
Support for this holding is found in the
temporary regulation to which we now turn our attention.
2.
Interpretation of the Temporary Regulation
Generally, temporary regulations have binding effect and are
entitled to the same weight as final regulations.
See UnionBanCal
Corp. v. Commissioner, 113 T.C. 309, 316 (1999); Peterson Marital
Trust v. Commissioner, 102 T.C. 790, 797 (1994), affd. 78 F.3d 795
(2d Cir. 1996).
We interpret temporary regulations in toto rather
than phrase by phrase.
See Norfolk Energy, Inc. v. Hodel, 898 F.2d
1435, 1442 (9th Cir. 1990).
The temporary regulation comports with the language of the
statute.
It succinctly states that, although copyrights do not
constitute export property, copyrighted articles, such as computer
software, do qualify as long as the article is not accompanied by a
right to reproduce outside the United States.
Permitting a right
- 33 to reproduce abroad would facilitate reproduction activity outside
the United States.
That is not the result intended.
The temporary regulation contains four sentences.
The first
sentence is virtually identical to the language of the statute.
It
states that intangibles (other than certain copyrights) are not
export property.
The introductory clause of the second sentence applies the
general rule that a copyright is not export property, giving books
and computer software as examples of items subject to the general
rule (disqualifying intangibles).
The second sentence states that
a copyrighted article exported without the right to reproduce for
external use is export property (so long as the other requirements
are met).
The third sentence expands upon the second sentence.
Read
together, the two sentences provide that computer software on any
medium (i.e., magnetic tape, punched cards, or disks), if not
accompanied by a right to reproduce outside the United States, is
export property.
By rendering the medium irrelevant, the third
sentence distinguishes among copyrights based upon their content.
The fourth sentence is identical to the last sentence of
section 1.993-3(f)(3), Income Tax Regs.
address
the
concern
of
the
sound
It was therein inserted to
recording
industry
that
the
parenthetical was not written broadly enough to include its industry
practices.
Specific reference to computer software in the second
- 34 and third sentences of the temporary regulation would not have been
made (in 1987) to contradict the fourth sentence (which was carried
over from section 1.993-3(f)(3), Income Tax Regs., to the temporary
regulation).
According to petitioner, computer software masters are “master
recording
tapes”
(within
the
purview
of
the
fourth
sentence)
licensed for reproduction outside the United States, and thus
constitute export property.
We disagree.
Read in context, a
“master recording tape” does not include computer software.
Because the second sentence interprets the general rule (that
copyrights are not export property), “reproduction” in the fourth
sentence refers to a copyright transaction described in the second
sentence.
The fourth sentence emphasizes that sound recording
masters fall within the parenthetical and thus are not disqualified
by the second sentence.
Contrary to petitioner’s assertion, the
fourth sentence is not “trumped” by the second sentence because the
fourth sentence concerns a “master recording tape” whereas the
second sentence concerns computer software and books.
(It was
unnecessary to refer to motion pictures in the fourth sentence
because the legislative history reflects that copyrights in motion
pictures fall within the exception, and the motion picture industry
did not lobby for modification.) Petitioner’s interpretation of the
fourth sentence would nullify, rather than harmonize with, other
provisions of the temporary regulation.
- 35 In sum, we hold that pursuant to the temporary regulation,
copyrighted computer software with a right to reproduce abroad does
not qualify as export property.
3.
Validity of the Temporary Regulation
We now turn our attention to petitioner’s alternative argument
that the temporary regulation is invalid.
The
temporary
regulation
was
promulgated
pursuant
to
the
general authority granted to the Secretary by section 7805(a), not
pursuant
to
specific
legislative
authority.
Thus,
it
is
interpretive, see Jackson Family Found. v. Commissioner, 97 T.C. 534
(1991), affd. 15 F.3d 917 (9th Cir. 1994), and should be upheld if
it
is
found
to
“‘implement
reasonable manner’”,
the
congressional
mandate
in
some
United States v. Cartwright, 411 U.S. 546, 550
(1973) (quoting United States v. Correll, 389 U.S. 299, 307 (1967)).
We defer to a regulation if it is a reasonable and permissible
interpretation of the statute.
See, e.g., Atlantic Mut. Ins. Co. v.
Commissioner, 523 U.S. 382, 389 (1998); National Muffler Dealers
Association, Inc. v. United States, 440 U.S. 472, 488-489 (1979).
It is not our function to decide what the best or most
advisable method would be to implement the Internal Revenue Code.
As the Supreme Court stated in United States v. Correll, supra at
307: “Congress has delegated to the Commissioner, not to the courts,
the task of prescribing ‘all needful rules and regulations for the
- 36 enforcement’ of the Internal Revenue Code.”
The delegation helps
guarantee
that
by
subject.”
United States v. Moore, 95 U.S. 760, 763 (1877).
the
rules
will
be
written
“masters
of
the
In determining whether the Secretary’s interpretation of a
statute is a reasonable one, rather than the best or only one, see
Atlantic Mut. Ins. Co. v. Commissioner, supra, we are not at liberty
to strike down the regulation even if the taxpayer offers a more
attractive statutory interpretation, see United States v. Vogel
Fertilizer Co., 455 U.S. 16, 26 (1982); Brown v. United States, 890
F.2d 1329, 1338 (5th Cir. 1989).
The parties agree that the standard in National Muffler Dealers
Association, Inc. v. United States, supra at 477,7 is appropriate in
7
National Muffler Dealers Association, Inc. v. United
States, 440 U.S. 472, 477 (1979), states, in pertinent part:
In determining whether a particular regulation
carries out the congressional mandate in a proper
manner, we look to see whether the regulation
harmonizes with the plain language of the statute, its
origin, and its purpose. A regulation may have
particular force if it is a substantially
contemporaneous construction of the statute by those
presumed to have been aware of congressional intent.
If the regulation dates from a later period, the manner
in which it evolved merits inquiry. Other relevant
considerations are the length of time the regulation
has been in effect, the reliance placed on it, the
consistency of the Commissioner’s interpretation, and
the degree of scrutiny Congress has devoted to the
regulation during subsequent re-enactments of the
statute. [Citations omitted.]
- 37 this case.
By applying that standard, we hold that the temporary
regulation is valid.
(1)
the
The temporary regulation harmonizes8 with the purpose of
statute
definition
Our holding is based upon the following.
of
by
specifically
export
excluding
property.
The
intangibles
purpose
of
the
from
the
DISC/FSC
provisions was to increase U.S. exports and U.S. jobs by excluding
from Federal income tax certain property sold by an FSC or a DISC
that was produced, manufactured, or created in the United States.
See Staff of Joint Comm. on Taxation, General Explanation of the Tax
Reform Act of 1976, at 290-291 (J. Comm. Print 1976).
regulation
allows
computer
software
to
be
The temporary
entitled
to
this
exclusion, as long as the software is not accompanied by a right to
reproduce abroad.
On the other hand, exporting a computer software master with a
right
to
reproduce
manufacturing
jobs
abroad
sends
offshore.
adaptation,
Thus,
granting
localization,
FSC
benefits
and
to
copyrighted computer software with the right to reproduce abroad
would undermine the basic policy of withholding tax incentives from
export transactions that create manufacturing or production jobs
overseas.
8
Petitioner acknowledges that, in the event we hold that
the parenthetical is restricted to motion pictures and sound
recordings (as we have), respondent’s construction of the
temporary regulation harmonizes with the statute’s plain meaning.
- 38 Petitioner claims that because computer software involves a
creative industry where important jobs are performed in the United
States, it belongs in the parenthetical. Respondent posits that the
question is not whether jobs are being performed in the United
States but rather whether jobs that also could be performed in the
United States are moved offshore because copyrights and other
intangibles are exported under license.
(2)
to
We agree with respondent.
The temporary regulation reflects Congress’ decision not
expand
export
property
treatment
for
intangibles
copyrights in motion pictures and sound recordings.
1982
amendments
to
the
DISC
provisions
beyond
The 1976 and
reflected
Congress’
continuing concern with the cost and revenue effects of the DISC
regime.
Despite pleas from the representatives of the software
industry for a change in the statutory language to include computer
software as export property, section 993(c)(2)(B) was reenacted9 as
section 927(a)(2)(B) without the requested inclusion, apparently on
the basis that the requested change would not be revenue neutral and
that U.S. jobs would be moved offshore.
See TSR, Inc. & Sub. v.
Commissioner, 96 T.C. 903, 916-917 (1991).
Had Congress desired to
make FSC benefits available to computer software copyrights in 1984,
9
The 1984 FSC legislation replaced many of the tax rules
that had been applicable to DISCs. DISCs were not abolished;
however, their tax benefits were limited, and an interest charge
on tax-deferred amounts was imposed on DISC shareholders. See
Deficit Reduction Act of 1984, Pub. L. 98-369, sec. 802(b),
98 Stat. 494, 997.
- 39 it would have specifically done so.
See, e.g., Central Bank v.
First Interstate Bank, 511 U.S. 164, 184-188 (1994); United States
v.
Riverside
Bayview
Homes,
Inc.,
474
U.S.
121,
137
(1985).
Congress’ inaction reflects its intent not to grant export property
treatment to computer software copyrights. The temporary regulation
followed Congress’ lead.
(3)
Congress
was
aware
of
the
temporary
regulation,
treatment of computer software, and the debate thereon.
its
Congress
had the opportunity to amend the statute in light of the temporary
regulation.
See Perkin-Elmer Corp. & Subs. v. Commissioner, 103
T.C. 464, 480 (1994).
But it did not do so, and the inference of
congressional approval is strong when legislative history contains
some
indication
that
Congress
administrative construction.
was
aware
of
and
approved
the
See Central Bank v. First Interstate
Bank, supra at 184-188.
(4)
The Commissioner has consistently denied export property
treatment for computer software when accompanied by the right to
reproduce outside the United States.
As early as the comment period
leading up to the issuance of section 1.993-3(f)(3), Income Tax
Regs., and the accompanying technical memorandum, see supra note 6,
software industry representatives sought a regulation that would
include computer software in the parenthetical.
The Commissioner
considered but rejected the industry’s position, as evidenced by the
omission of computer software from section 1.993-3(f)(3), Income Tax
- 40 Regs.
The Commissioner again rejected the industry’s position in
the temporary regulation by explicitly excluding computer software.
(5)
Invalidating the temporary regulation would eradicate the
need for “copyrights” to appear in section 927(a)(2)(B) because most
copyrights would qualify.
If the parenthetical were to be expanded
so as to be based upon the type of medium on which a copyrighted
work can be mastered, then copyrights in books would qualify.
In sum, the temporary regulation represents a “reasonable
accommodation
of
the
competing
interests
administrability, and avoidance of abuse.”
Commissioner, 523 U.S. at 383.
of
fairness,
Atlantic Mut. Ins. Co.
We believe that the temporary
regulation is a reasonable and permissible interpretation of section
927(a) and harmonizes with the language, purpose, and legislative
history of the statute.
4.
Final Matters
In reaching our conclusions, we have considered all arguments
raised by the parties.
For the sake of completeness, we now discuss
two arguments that heretofore have not been addressed.
(1)
The parties disagree as to whether the royalties at issue
were paid solely for the exploitation of copyright rights, as
petitioner maintains, or for patents, trademark, and trade secrets,
in
addition
to
copyrights
rights,
as
respondent
maintains.
Petitioner argues that assuming arguendo the royalties it received
- 41 from the OEM’s and CFC’s were for various types of intellectual
property, the payment for rights other than copyrights was de
minimis.
In light of our holding above that computer software masters do
not fall within the parenthetical, we conclude that it is not
necessary to decide this issue.
(2)
Petitioner
maintains
that
we
should
interpret
the
parenthetical in the same manner as the Court of Appeals for the
Ninth Circuit (the court to which an appeal in this case would lie)
interpreted the phrase “books, magazines, periodicals, films, video
tapes, or other matter” for purposes of 18 U.S.C. sec. 2252(a)(4)(B)
in United States v. Lacy, 119 F.3d 742 (9th Cir. 1997).
In that
case, the Court of Appeals interpreted “other matter” as follows:
“matter” is the physical medium that contains the visual
depiction–-in this case, the hard drive of Lacy’s computer
and the disks found in his apartment. * * * “* * * a word
is understood by the associated words, * * * a general
term following more specific terms means that the things
embraced in the general term are the same kind as those
denoted by the specific terms.” * * * Here, the word
“matter” appears at the end of the list “books, magazines,
periodicals, films, [and] video tapes,” all of which are
physical media capable of containing images. [Citations
omitted.]
Id. at 748.
Lacy was a criminal case.
The issue involved therein was
whether an individual computer graphics file is “other matter”
pursuant to 18 U.S.C. sec. 2252(a)(4)(B). The defendant was charged
with possessing child pornography; he had downloaded computerized
- 42 visual depictions of child pornography to his computer.
The statute
in question made it a crime to possess “3 or more books, magazines,
periodicals, films, video tapes, or other matter” containing the
offending depictions.
18 U.S.C. 2252(a)(4)(B).
The Court of
Appeals held that because “matter” appeared at the end of a list of
physical
media
capable
of
containing
images,
“other
matter”
containing any visual depiction of a minor engaging in sexually
explicit conduct means a physical medium that contains
depiction.
visual
United States v. Lacy, supra at 748; accord United
States v. McKelvey, 203 F.3d 66 (1st Cir. 2000); see also United
States v. Daury, 215 F.3d 257 (2d Cir. 2000); cf. United States v.
Vig, 167 F.3d 443, 448 (8th Cir. 1999); United States v. Hall, 142
F.3d 988, 999 (7th Cir. 1998).
Petitioner’s reliance on Lacy is misplaced. Lacy construed
different words, within a different statute, in a different context.
It is irrelevant to the issue before us.
5.
Conclusion
Computer software does not come within the purview of the
parenthetical.
Accordingly, we hold that copyrights in computer
software masters are not export property for purposes of determining
section 924 FTGR’s.
- 43 To reflect the foregoing and the parties’ concessions,
Decision will be entered
under Rule 155.
This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.