The Federal Court has held that licensing payments by an Australian distributor to a Canadian software supplier were royalties under the Australia/Canada DTA.

  • The taxpayer is the Australian distributor of working papers software that was developed by a Canadian resident entity.
  • The taxpayer pays annual fees to the Canadian company under its licensing arrangements with that company.
  • In the relevant period, the fees it paid included a percentage of the software and template license fees that the taxpayer charged its customers.
  • The Commissioner claimed the payments were “royalties” within the meaning of the DTA between Australia and Canada and were subject to withholding tax.
  • The taxpayer did not withhold any amounts and the Commissioner imposed an administrative penalty under s 16-30 of Sch 1 to the TAA.

The Court found the payments were not excluded by Article 12(7) of the DTA from the definition of the term “royalties” in the DTA because the nature of the rights the taxpayer acquired under the distribution agreement, in relation to the use of the software for which the payments were made, were not limited to such rights as were necessary for the effective operation of the software by the taxpayer itself. Rather, the Court said they were for the commercial exploitation of that software by the taxpayer through the right to copy the Canadian company software for sale to end users and the right to use the copyright for the purposes of developing its own templates to sell in conjunction with the Canadian software. It therefore held the payments were “royalties” and affirmed the penalties imposed.

(Task Technology Pty Ltd v FCT [2014] FCA 38, Federal Court, Davies J, 6 February 2014.)

[LTN 25, 7/2/14]

Extract from Taxation Administration Act, First Schedule (‘TAA1’)

16-30   Failure to withhold: administrative penalty for entity other than exempt Australian government agency

An entity (except an * exempt Australian government agency) that:

(a)      fails to withhold an amount as required by Division 12; or

(b)      fails to pay an amount to the Commissioner as required by Division 13 or 14;

is liable to pay to the Commissioner a penalty equal to that amount.

Note 1:       An entity may become liable under this section in respect of a payment it made or received that is taken to have been subject to withholding tax as a result of a Commissioner‘s determination under subsection 177F(2A) of the Income Tax Assessment Act 1936 (see also subsection 177F(2F) of that Act).

Note 2:       Division 298 in this Schedule contains machinery provisions for administrative penalties.

[FJM Note:      Under s26-25 of the ITAA97, deductions can be denied for the payment of ‘royalties’ (as defined under domestic law) where there was a tax withholding obligation that was not met.]

Extract from the [2014] FCA 38


2. Article 12(3)(a) of the DTA defines “royalties” to include, relevantly:

…payments… to the extent to which they are made as consideration for:

(a) the use of, or the right to use, any copyright,… secret formula or process…

3. Article 12(3)(a) of the DTA is to be read in conjunction with Article 12(7) which provides that:

Without prejudice to whether or not such payments would be dealt with as royalties under this Article in the absence of this paragraph, the term “royalties” as used in this Article shall not include payments… made as consideration for the supply of, or the right to use, source code in a computer software program, provided that the right to use the source code is limited to such use as is necessary to enable effective operation of the program by the user.