AMERICAN CHEMICAL SOCIETY,MUMBAI vs. DEPUTY COMMISSIONER OF INCOME TAX (INTERNATIONAL TAXATION)-1(1)(1), MUMBAI

The captioned appeal by the assessee is directed against the order of Assessing Officer dated 27.10.2017 passed under section 144C(13) r.w.s. 143(3) of the Income Tax Act, 1961 (in short ‘the Act’), which is in terms of the directions issued by the Disputes Resolution Panel-1, Mumbai under section 144C(5) of the Act dated 22.09.2017.

In this appeal, assessee has raised the following Grounds of appeal:

Briefly put, the relevant facts are that the appellant assessee is a not- for-profit corporation based in USA, established to promote and support development of knowledge in the field of chemistry. Assessee filed its Return of income for Assessment Year 2014-15 declaring income at ‘NIL’ on the plea that it was a tax resident of USA and entitled to be taxed in accordance with the provisions of India-USA Double Taxation Avoidance Agreement ("DTAA") to the extent they are more beneficial. The Assessing Officer, however, taxed the income earned by the Assessee from the Indian Customers with respect to the subscription fees for (a) Chemical Abstracts Services (CAS) division and (b) Publications (PUBS) division as ‘royalty’ in terms of section 9(1)(vi) of the Act as well as Article 12(3) of the India-USA DTAA. The stand of the assessee was that such incomes constitute ‘business profits’, which are not taxable in the absence of any Permanent Establishment (PE) in India since the entire products/services were being provided entirely from outside India. This is the precise area of difference between the assessee and the Revenue, which is manifested in Ground of appeal No. 2 enumerated above.

Insofar as the issue regarding the income earned by the assessee from the Indian Customers with respect to the subscription fees for CAS is concerned, the relevant facts are as follows. In this context, assessee identifies, aggregates, and organizes publicly disclosed chemistry related scientific information and provides online, web-based and desktop access to such database of scientific content to its customers. Search analysis tools help customers in locating chemistry-related substance information in the database. Customers of the assessee generally include organizations and individuals interested in the field of chemistry, viz. educational institutes, research organisation, companies, etc. The Assessing Officer held that CAS fee was a consideration for information concerning industrial or commercial experience, which is to be understood as ‘royalty’ within the meaning of section 9(1)(vi) of the Act as well as Article 12(3) of the India-USA DTAA. Furthermore, the Assessing Officer held that the payments in question may also be treated as being paid to the assessee for use of industrial, commercial or scientific ‘equipment’, and on that basis also, it can be understood as ‘royalty’ within the meaning of section 9(1)(vi) of the Act as well as Article 12(3) of the India-USA DTAA.

Before us, Ld. Senior Counsel for the assessee has explained key features of the agreement with various customers, samples of which are filed in the Paper book at page 15 to 42, which are as follows – that the assessee grants the customer a non-perpetual, non-exclusive and non- assignable right to use SciFinder/ similar search tools to search for material stored and organized in the databases on servers located in the USA; that the customers are allowed to log-in to the online site using the assigned usernames / login ids; and, that the agreement provides for restricted rights in relation to data retrieved using the search tools - access, download or save records for internal and private use only. The Ld. Senior Counsel also submitted that mere access to the database is provided by the assessee and in terms of the arrangement, no copyright can be said to be acquired by the customer; and, what is provided to the subscriber/customer in the instant case is neither a copyright and nor any full-fledged right to use, but only a limited right to use of a copyrighted article, which does not give rise to any ‘royalty’ income in the hands of the assessee company. Further, the Ld. Senior Counsel relied on the judgment of the Hon'ble Supreme Court in the case of Tata Consultancy Services vs State of Andhra Pradesh, 271 ITR 401 (SC) to bring out the difference between a copyright and a copyrighted article in context of software products. In support of its contention about the characterization of instant income, the assessee majorly relied on following judgments : i. Dun & Bradstreet Espana, S.A., In re [2005] 142 Taxman 284/272 ITR 99 (AAR) ii. DIT vs. Dun & Bradstreet [2011] 338 ITR 95 (Bom HC) iii. CIT vs. HEG Limited [2003] 263 ITR 230 (MP HC) iv. ITO vs. Cadila Healthcare [2017] 162 ITD 575 (Ahd ITAT)

On the other hand, the Ld. Departmental Representative for the Revenue has merely reiterated the stand of the lower authorities which is to the effect that the income earned from subscription fees for CAS division be treated as consideration for information concerning industrial or commercial experience, which is defined as ‘royalty’ within the meaning of section 9(1)(vi) of the Act as well as Article 12(3) of the India-USA DTAA; and that the payments to the assessee can also be treated as payments for use of industrial, commercial or scientific ‘equipment’ which again is to be understood as ‘royalty’ within the meaning of section 9(1)(vi) of the Act as well as Article 12(3) of the India-USA DTAA.

We have carefully considered the rival submissions, perused the relevant material, including the orders of the lower authorities as well as the case laws referred at the time of hearing. Notably, the controversy before us primarily revolves around the characterization of the income earned by the assessee from the Indian subscribers. The income-tax authorities have invoked section 9(1)(vi) of the Act and/or Article 12(3) of the India-USA Treaty in order to say that the receipts are in the nature of ‘royalty’, and therefore the same is taxable in India. On the contrary, as per the assessee, the impugned receipts are in the nature of business profits, and in the absence of any PE in India, the same are not taxable in India. In the earlier part of this order, we have noted in sufficient detail, the manner in which the assessee earns the CAS fee from Indian subscribers, and the same is not being repeated for the sake of brevity. Factually speaking, it is evident that the assessee merely accumulates and organizes information already available in public domain / publicly disclosed information, and organizes the same at one place, thereby creating a database which is accessed by its customers against payment of subscription fee termed as CAS fee. Thus, prima facie, there is no copyright or intellectual property lying with the assessee itself in relation to such information or the contents of the database. Thus, there cannot be a case that the assessee company has transacted in the copyrights or intellectual property rights of the contents of the database of information which is merely collated and collected by it. It is abundantly clear from a perusal of some of the sample agreements with customers (placed in the Paper book at pages 15 to 42) that what the customers get is only the right to search, view and display information (whether online or by taking a print) and reproducing or exploiting the same in any manner; and its use for purposes other than personal use is strictly prohibited. Further, in para 7.12 of the assessment order, the Assessing Officer has stated that the assessee has a wealth of industrial, commercial and scientific experience collected, developed and systemized over a period of time. Further, in para 7.13 of the assessment order, the Assessing Officer has also referred to paragraph 11 of OECD commentary on Article 12 to hold that the payment in question is to be understood as ‘royalty’. As per the Assessing Officer, the technical, commercial or scientific information provided by the assessee to the Indian customers through SciFinder arises from its previous experience which gives economic benefit to the customers. The Assessing Officer also points out that ACS Network and SciFinder serve as a platform as well as a tool/gateway for access to such information. All these have been referred by the Assessing Officer to arrive at an inference that the CAS fee is in the nature of ‘royalty’; and, for that purpose, the Assessing Officer has referred to para 11 of the OECD commentary on Article 12. In fact, the OECD commentary which has been referred to by the Assessing Officer itself provides an answer and belies the stand taken by the Assessing Officer. The OECD commentary referred in para 7.13 of the assessment order brings out that the payments which are to be understood as ‘royalty’ in the context of information concerning industrial, commercial or scientific experience ought to be in relation to information which is undivulged and/or arises from previous experience. In other words, in order to be understood as ‘royalty’, the payment must be for information which is exclusively possessed or secret under the ownership of the grantor of such information. In our considered opinion, the fact-situation in the instant case does not comply with the aforesaid requirement so as to be treated as a payment for ‘royalty’.

As discussed earlier, in the instant case, the assessee merely identifies, aggregates, and organizes publicly disclosed chemistry related scientific information or publishes research work submitted by scientists worldwide. Thus, this information is clearly not undivulged; rather, it is an information which is available in public domain, as is also evident from the factual position noted by the Assessing Officer himself in the assessment order.

In this context, the learned Counsel pointed out that similar situation has been considered by the AAR ruling in the case of Dun and Bradstreet Espana S.A.(supra), which has been upheld by the Hon'ble Bombay High Court in the case of DIT vs. Dun and Bradstreet Information Services India (P) Ltd. (supra). In this case, the applicant, a non-resident company of Spain was engaged in the business of compilation and selling Business Information Reports ('BIR') in their local markets and to other associate companies worldwide. On the issue of whether the payment made for the purchase of BIRs would be in the nature of Royalty, the AAR opined that the applicant has rightly equated the transaction of sale of Business Information Reports in electronic form to a sale of book, which does not involve any transfer of intellectual property and held that the payment to non-resident company for downloading BIRs is not in the nature of Royalty or fee for technical services. The AAR held that the purchase of standardized reports publicly available on the internet upon payment of subscription charges is akin to payment for a copyrighted article and accordingly does not constitute Royalty. Relevant extract of the AAR ruling is as follows:

In this context, we also think it apposite to refer to the judgment rendered by the Hon'ble Madhya Pradesh High Court in the case of CIT vs. HEG Limited [2003] 263 ITR 230 (MP). In the aforesaid case, the assessee paid certain amount to a firm of USA for purchase of some information. The Assessing Officer held that the said transaction involved imparting of information concerning technical, industrial, commercial or scientific knowledge, experience or skill, and, therefore, the payment was royalty for purchase of data of confidential nature and the assessee was liable to deduct TDS thereon. The matter travelled to the High Court and it held that purchase of any and every type of commercial information cannot earn the status of royalty. To have the status of royalty, the information transacted should have some special features, which is hitherto not available in public domain. The relevant extract of the said ruling is as follows:

With respect to the subscription fee for the CAS division being considered as Royalty for "use" of or "right to use" of a copyright, a reference to Copyright Act, 1957 is also relevant. A person can be said to have acquired a copyright or the right to use the copyright in a computer software or database (as described by the Assessing Officer), where he is authorized to do all or any of the acts as per the definition of the term "copyright" under Section 14 of the Copyright Act, 1957. However, mere access to that work or permission to use the work cannot imply that the payer is paying for use or right to use the copyright. In other words, when no copyright is acquired by the payer, question of using it or getting a right to use it does not arise.

In the present context, we may also examine the issue from another angle as follows. The transfer of a copyrighted right means that the recipient has a right to commercially exploit the database/software, e.g. reproduce, duplicate or sub-license the same; such payments may be classified as royalty, but factually speaking in the present no such rights in database or search tools (SciFinder or STN) are acquired by the customers, as is evident from the terms of the sample agreement of CAS customers. In our considered view, transfer of any right in a copyrighted article is analogous to the rights acquired by the purchaser of a book. In the case of a book, the publisher of the book grants the purchaser certain rights with respect to the use of the content of the book, which is copyrighted, but the purchaser of the book does not acquire the right to exploit the underlying copyright. When the purchaser reads the book, he only enjoys its contents. Similarly, the user of the copyrighted software does not receive the right to exploit the copyright in the software; he only enjoys the product/benefits of the product in the normal course of his business. Similarly, in the instant case, customers of the assessee only enjoy the benefits of using SciFinder and STN and do not acquire the right to exploit any copyright in these software. The difference between a copyright and a copyrighted article in context of software has been brought out very clearly by the Hon'ble Supreme Court of India in the case of Tata Consultancy Services vs. State of Andhra Pradesh (supra).

In view of the aforesaid discussion, in our considered view, the income earned by the assessee from the Indian Customers with respect to the subscription fees for CAS cannot be taxed as royalty as per section 9(1)(vi) of the Act as well as Article 12(3) of the India-USA DTAA. Thus, assessee succeeds on this issue.

We shall now advert to another issue, which pertains to whether income earned by the assessee from the Indian Customers with respect to the subscription fees for PUBS division be taxed as royalty in terms of section 9(1)(vi) of the Act as well as Article 12(3) of the India-USA DTAA.

Before us, the Ld. Senior Counsel pointed out that the characteristics of the PUBS divisions is similar to CAS division, which has been dealt at length by us in the foregoing paragraphs. The Learned Senior Counsel submitted that the PUBS division of the assessee reviews and publishes research work submitted by scientists worldwide, organizes the same into research journals/ e-books and engages in subscription sales of internet and print copies of such research journals. The assessee grants online/ web- based access to e-journals, e-books, chapters, articles, proceedings, etc., stored on the server, in consideration for an annual fee /subscription charges. Such e-journals / e-books can be searched by a subscriber by using relevant keywords on PUBS website after logging in by using their log-in credentials. Customers are merely granted access to search and view the e- journals and obtain standardized reports / research articles available therein with no right to use the copyright in the e-journals/ articles. The agreements (as filed in the Paper book at page 43 to 71) entered by the assessee with the customers provide that copyright in the e-books, e-journals etc., remain with the assessee and the customers do not have any right of ownership on the same. The access to e-journals etc. is given only for limited users and the same is restricted to specified authorized sites /users per customer through the IP address of customers. The web access journals can only be accessed by the customers/authorized users through a secure network as prescribed in the agreements.

On the other hand, the Ld. Departmental Representative for the Revenue has merely reiterated the stand of the lower authorities on the PUBS division similar to stand with respect to taxability of the CAS fee.

We have heard the rival submissions and perused the relevant material on record including the order of the lower authorities on the issue in dispute. We find that issue with respect to the PUBS division coincides with the issues on the CAS fee. The journal provided by the PUBS division do not provide any information arising from assessee's previous experience. The assessee's experience lies in the creation of / maintaining such information online. By granting access to the journals, the assessee neither shares its experiences, techniques or methodology employed in evolving databases with the users, nor imparts any information relating to them. As is clearly evident from the sample agreements, all that the customers get is the right to search, view and display the articles (whether online or by taking a print) and reproducing or exploiting the same in any manner other than for personal use is strictly prohibited. Further, the customers do not get any rights to the journal or articles therein. They can only view the article in the journal that they have subscribed to and cannot amend or replicate or reproduce the journal. Thus, the customers are only able to access journal/articles for personal use of the information. No 'use or right to use' in any copyright or any other intellectual property of any kind is provided by the assessee to its customers. Furthermore, the information resides on servers outside India, to which the customers have no right or access, nor do they possess control or dominion over the servers in any way. Therefore, the question of such payments qualifying as consideration for use or right to use any equipment, whether industrial, commercial or scientific, does not arise.

To put a comparison, if someone purchases a book, then the consideration paid is not for the use of the copyright in the book/ article. The purchaser of a book does not acquire the right to make multiple copies for re-sale or to make derivative works of the book, i.e., the purchaser of a book does not obtain the copyright in the book. Similarly, the purchaser of the assessee's journals, articles or database access does not have the right to make copies for re-sale and does not have the right to make derivative works. In short, the purchaser has not acquired the copyright of the article or of the database. What the buyer gets is a copyrighted product, and accordingly the consideration paid is not royalty, but for purchase of a product. In the instant case too, what is acquired by the customer is a copyrighted article, copyrights of which continue to lie with assessee for all purposes. lt is a well settled law that copyrighted article is different from a copyright, and that consideration for the former, i.e. a copyrighted article does not qualify as royalties.

Thus, the principles noted by us in the earlier part of this order in the context of the income earned by way of CAS fee are squarely applicable to the subscription revenue received from customers of PUBS division for sale of journal also, and accordingly PUBS fee also does not qualify as ‘Royalty’ in terms of section 9(1)(vi) of the Act as well as Article 12(3) of the India-USA DTAA.

Ground No. 3 relates to alternative plea that the Assessing Officer erred in determining tax payable on the assessed income @ 20%, instead of 15% as prescribed in Article 12(2) of India-USA DTAA. Since we have allowed Ground No. 2 of the appeal holding that the income of the assessee is not liable to be taxed in India, therefore, this Ground of appeal is rendered academic.

Insofar as Ground of appeal nos. 4 is concerned, it relates to charging of interest u/s 234A & 234B of the Act, which is consequential in nature and does not require any specific adjudication.

In the result, the appeal of the assessee is allowed, as above.