Article 12 provides rules — U.S. Income Tax Treaty

paid to a beneficial owner that is a resident of the other Contracting State.

Paragraph 1

Paragraph 1 generally grants to the Contracting State of residence the exclusive right to tax royalties (i.e., an elimination of source-country withholding tax) beneficially owned by its residents and arising in the other Contracting State.

The term “beneficially owned” is not defined in the Convention, and is, therefore, defined under the internal law of the Contracting State of source. The person that beneficially owns the royalty for purposes of Article 12 is the person to which the royalty income is attributable for tax purposes under the laws of the State of source. Thus, if a royalty arising in a Contracting State is received by a nominee or agent that is a resident of the other State on behalf of a person that is not a resident of that other Contracting State, the royalty is not entitled to the benefits of Article 12. However, a royalty received by a nominee on behalf of a resident of that other State would be entitled to benefits. These limitations are confirmed by paragraph 4 of the OECD Commentary to Article 12. See also paragraph 24 of the OECD Commentary to Article 1.

Paragraph 2

Paragraph 2 defines the term “royalties,” as used in Article 12, to include any consideration for the use of, or the right to use, any copyright of literary, artistic, scientific or other work; for the use of, or the right to use, any patent, trademark, design or model, plan, secret formula or process, or other like right or property; or for information concerning industrial, commercial, or scientific experience. The term “royalties” does not include gain derived from the alienation of any right or property that would give rise to royalties, whether or not such gain is contingent on the productivity, use, or further alienation thereof. Such gains are dealt with

under Article 13 (Gains), and therefore generally are subject to the same treatment under the Convention as royalties. The term “royalties” also does not include income from leasing personal property.

The term royalties is defined in the Convention and therefore is generally independent of domestic law. Certain terms used in the definition are not defined in the Convention, but these may be defined under domestic tax law. For example, the term “secret process or formulas” is found in the Code, and its meaning has been elaborated in the context of sections 351 and 367. See Rev. Rul. 55- 17, 1955-1 C.B. 388; Rev. Rul. 64-56, 1964-1 C.B. 133; Rev. Proc. 69- 19, 1969-2 C.B. 301.

Consideration for the use or right to use cinematographic films and films or tapes for radio or television broadcasting is specifically included in the definition of royalties. It is intended that, with respect to any subsequent technological advances in the field of radio or television broadcasting, consideration received for the use of such technology will also be included in the definition of royalties.

If an artist who is resident in one Contracting State records a performance in the other Contracting State, retains a copyrighted interest in a recording, and receives payments for the right to use the recording based on the sale or public playing of the recording, then the right of such other Contracting State to tax those payments is governed by Article 12. See Boulez v. Commissioner, 83 T.C. 584 (1984), aff'd, 810 F.2d 209 (D.C. Cir. 1986). By contrast, if the artist earns in the other Contracting State income covered by Article 16 (Artistes and Sportsmen), for example, endorsement income from the artist’s attendance at a film screening, and if such income also is attributable to one of the rights described in Article 12 ( e.g., the use of the artist’s photograph in promoting the screening), Article 16 and not Article 12 is applicable to such income.

Computer software generally is protected by copyright laws around the world. Under the Convention, consideration received for the use of, or the right to use, computer software is treated either as royalties or as business profits, depending on the facts and circumstances of the transaction giving rise to the payment. Because computer software is protected by copyright laws, consideration received for the use of, or the right to use, computer software may be treated as royalties notwithstanding the fact that the term “computer software” is not used in paragraph 2.

The primary factor in determining whether consideration received for the use of, or the right to use, computer software is treated as royalties or as business profits is the nature of the rights transferred. See Treas. Reg. section 1.861-18. The fact that the transaction is characterized as a license for copyright law purposes is not dispositive. For example, a typical retail sale of "shrink wrap" software generally will not be considered to give rise to royalty income, even though for copyright law purposes it may be characterized as a license.

The means by which the computer software is transferred are not relevant for purposes of the analysis. Consequently, if software is electronically transferred but the rights obtained by the

transferee are substantially equivalent to rights in a program copy, the payment will be considered business profits.

The term “industrial, commercial, or scientific experience” (sometimes referred to as “know-how”) has the meaning ascribed to it in paragraph 11 of the Commentary to Article 12 of the OECD Model. Consistent with that meaning, the term may include information that is ancillary to a right otherwise giving rise to royalties, such as a patent or secret process.

Know-how also may include, in limited cases, technical information that is conveyed through technical or consultancy services. It does not include general educational training of the user's employees, nor does it include information developed especially for the user, such as a technical plan or design developed according to the user's specifications. Thus, as provided in paragraph 11 of the Commentary to Article 12 of the OECD Model, the term “royalties” does not include payments received as consideration for after-sales service, for services rendered by a seller to a purchaser under a guarantee, or for pure technical assistance.

The term “royalties” also does not include payments for professional services (such as architectural, engineering, legal, managerial, medical, software development services). For example, income from the design of a refinery by an engineer (even if the engineer employed know-how in the process of rendering the design) or the production of a legal brief by a lawyer is not income from the transfer of know-how taxable under Article 12, but is income from services taxable under either Article 7 (Business Profits) or Article 14 (Income from Employment). Professional services may be embodied in property that gives rise to royalties, however. Thus, if a professional contracts to develop patentable property and retains rights in the resulting property under the development contract, subsequent license payments made for those rights would be royalties.

Paragraph 3

Paragraph 3 provides an exception to the rules of paragraph 1 that eliminate source country taxation of royalties. This paragraph applies in cases where the beneficial owner of the royalties carries on business through a permanent establishment in the Contracting State of source and the royalties are attributable to that permanent establishment. In such cases the provisions of Article 7 (Business Profits) will apply.

The provisions of paragraph 7 of Article 7 (Business Profits) apply to income described in this paragraph. For example, royalty income that is attributable to a permanent establishment and that accrues during the existence of the permanent establishment, but is received after the permanent establishment no longer exists, remains taxable under the provisions of Article 7 (Business Profits), and not under this Article.

Paragraph 4

Paragraph 4 provides that in cases involving special relationships between the payer and beneficial owner of royalties, Article 12 applies only to the extent the royalties would have been paid absent such special relationships ( i.e., an arm's-length royalty). Any excess amount of

royalties paid may be taxable in the Contracting State in which it arises at a rate not to exceed 5 percent. An explanation of this rule is provided in the explanation of paragraph 8 of Article 11 (Interest), above.

Paragraph 5

Paragraph 5 provides that a resident of a Contracting State shall not be considered the beneficial owner of royalties in certain “back-to-back” royalty arrangements. The benefits of Article 12 therefore are not available with respect to such royalties. This rule is similar to rules dealing with interest, royalties, and other income in paragraph 11 of Article 10 (Dividends), paragraph 11 of Article 11 (Interest), and paragraph 4 of Article 21 (Other Income). These limited “anti-conduit” rules and their interaction with U.S. domestic law are discussed in the explanation of paragraph 11 of Article 10 above.

Paragraph 5 in particular provides that a resident of a Contracting State shall not be considered the beneficial owner of royalties in respect of intangible property if such royalties would not have been paid unless the resident pays royalties in respect of the same intangible property to a person that is not entitled to the same or more favorable treaty benefits and that is not a resident of either Contracting State. The operation of this rule can be illustrated in the following examples:

Example 1. B, a resident of a third country that does not have a tax treaty with Japan, licenses Japanese patent rights to A. A sublicenses its entire interest in the same Japanese patent rights to X, a Japanese company. X pays royalties of 100x to A with respect to the sublicense, and A pays royalties of 99x to B with respect to the license. The 100x of royalties would not have been paid to A if A had not paid royalties with respect to the Japanese patent rights to B. Under paragraph 5, A will not be considered the beneficial owner of the royalties from X, and therefore is not entitled to treaty benefits with respect to the royalties from X.

Example 2. The facts are the same as the facts of Example 1, except that B holds a debt claim against A that entitles B to 99x each year to the extent of A’s earnings in that year. A pays interest of 99x to B. Paragraph 5 does not apply to deny treaty benefits to A with respect to the royalties from X.

No inference is intended as to the result of Example 2 in cases of interest arising in the United States under U.S. domestic anti-abuse rules ( e.g., the anti-conduit rules and other antiabuse rules referred to in the explanation of paragraph 11 of Article 10 (Dividends)).

Relation to Other Articles

Notwithstanding the foregoing limitations on source country taxation of royalties, the saving clause of subparagraph 4(a) of Article 1 (General Scope) permits the United States to tax its residents and citizens, subject to the special foreign tax credit rules of paragraph 3 of Article 23 (Relief from Double Taxation), as if the Convention had not come into force.

The benefits of this Article are also subject to the provisions of Article 22 (Limitation on Benefits). Thus, if a resident of Japan is the beneficial owner of royalties paid by a U.S. corporation, the shareholder must qualify for treaty benefits under at least one of the tests of Article 22 in order to receive the benefits of this Article.