WISCONSIN DEPARTMENT OF REVENUE, PLAINTIFF-APPELLANT, v. MICROSOFT CORPORATION, DEFENDANT-RESPONDENT.
Case No. 2018AP2024
COURT OF APPEALS OF WISCONSIN
October 31, 2019
2019 WI App 62
Fitzpatrick, P.J., Blanchard and Kloppenburg, JJ.
PUBLISHED OPINION; Submitted on Briefs: May 24, 2019; Cir. Ct. No. 2017CV2214
Appellant ATTORNEYS: On behalf of the plaintiff-appellant, the cause was submitted on the briefs of Mark S. Zimmer of Wisconsin Department of Revenue, Madison.
Respondent ATTORNEYS: On behalf of the defendant-respondent, the cause was submitted on the brief of Timothy G. Schally of Michael Best & Friedrich LLP, Milwaukee, and Jeffrey A. Friedman, Daniel H. Schlueter and Ted W. Friedman of Eversheds Sutherland (US) LLP, Washington, DC.
COURT OF APPEALS DECISION DATED AND FILED October 31, 2019
Sheila T. Reiff Clerk of Court of Appeals
NOTICE
This opinion is subject to further editing. If published, the official version will appear in the bound volume of the Official Reports.
A party may file with the Supreme Court a petition to review an adverse decision by the Court of Appeals. See
APPEAL from an order of the circuit court for Dane County: SHELLEY J. GAYLORD, Judge. Affirmed.
Before Fitzpatrick, P.J., Blanchard and Kloppenburg, JJ.
BACKGROUND
¶2 The following facts are not disputed on appeal.
¶3 Microsoft is engaged in the business of developing, distributing, and licensing computer software. In this context, OEMs are businesses that manufacture, or at least assemble, computers, which incorporate Microsoft software. Examples of OEMs that incorporate Microsoft software include Dell and Hewlett Packard.
¶4 Relevant to the tax years in dispute, Microsoft entered into software copyright license agreements with OEMs.2 Some OEMs with which Microsoft entered into license agreements were based in Wisconsin, but the vast majority were not based in Wisconsin. Because this appeal does not concern OEMs based in Wisconsin, for clarity from this point forward all references to “OEMs” are to those OEMs that were not based in Wisconsin.
¶5 Under the license agreements, OEMs paid royalties to Microsoft, in exchange for which Microsoft granted the following non-exclusive rights to OEMs: (1) to install Microsoft‘s software on computers; and (2) to distribute Microsoft‘s software that was installed on the computers and grant sublicenses for end-users to use the software.
¶6 OEMs sold the computers with the installed Microsoft software to consumers directly or through retailers such as Best Buy. The Commission referred to the consumers as “end-users,” and we do the same. All that is at issue here is end use of the Microsoft software that occurred in Wisconsin, not end use that occurred outside Wisconsin.
¶7 Computers sold by OEMs with Microsoft software installed came with End-User Licensing Agreements (which we will refer to as “end-user agreements“). By accessing and using the Microsoft software on the computers sold by OEMs, the end-users agreed to be bound by the terms of the end-user agreements. The terms of the end-user agreements were dictated by Microsoft. By their terms, the end-user agreements were contracts between OEMs and the end-users which started with this sentence:
“IMPORTANT—READ CAREFULLY: This [end-user agreement] is a legal agreement between you ... and the manufacturer [OEM] of the computer system
or computer system component (‘HARDWARE‘) with which you acquired the Microsoft software product(s) identified above (‘SOFTWARE‘).”
The DOR does not contend that Microsoft was a party to the end-user agreements.
¶8 In calculating its franchise tax liability to the State of Wisconsin for tax years 2006 to 2009, Microsoft took the position that the software license royalties it received from OEMs should not be considered in calculating its franchise tax. The DOR subsequently conducted an audit and determined that Microsoft was required to include the royalties that it received from OEMs in its Wisconsin franchise tax calculations. Based on that determination, the DOR assessed against Microsoft additional franchise tax for the tax years 2006 through 2009 that, with statutory interest, totaled almost $2.9 million.
¶9 Microsoft petitioned the Commission for review of the additional assessed tax. Following a four-day trial, the Commission reversed the additional franchise tax assessed by the DOR against Microsoft.
¶10 The DOR appealed the Commission‘s decision to the circuit court, which affirmed the Commission‘s decision. The DOR appeals.
¶11 We will consider other pertinent facts in the Discussion that follows.
DISCUSSION
¶12 The DOR contends that the Commission erred when it determined that the software license royalties that OEMs paid to Microsoft should not be considered in calculating Microsoft‘s Wisconsin franchise tax. We now set forth our standard of review, consider the relevant portions of the statutory scheme at issue along with the Commission‘s application of that scheme and the DOR‘s challenge to the Commission‘s decision, and explain why we reject the DOR‘s arguments in support of its challenge.
I. Standard of Review and Statutory Interpretation.
¶13 In an appeal of a circuit court order affirming or reversing an agency decision, we review the decision of the agency, not that of the circuit court. Hilton ex rel. Pages Homeowners’ Ass‘n v. DNR, 2006 WI 84, ¶¶15, 293 Wis. 2d 1, 717 N.W.2d 166.3 When reviewing findings of fact made by the Commission, we will affirm the findings if those are supported by substantial evidence. See id., ¶30. “An agency‘s findings are supported by substantial evidence if a reasonable person could arrive at the same conclusion as the agency, taking into account all the evidence in the record.” Clean Wis., Inc. v. Public Serv. Comm‘n of Wis., 2005 WI 93, ¶46, 282 Wis. 2d 250, 700 N.W.2d 768. When reviewing questions of law decided by an agency, including statutory interpretation, our review is de
novo. See
II. The Software License Royalties Received by Microsoft from OEMs Were Not Subject to the Wisconsin Franchise Tax.
A. Statutory Framework.
¶15 Wisconsin currently imposes, and during the tax years at issue imposed, a franchise tax on a corporation based on the corporation‘s income derived from, or attributable to, sources within Wisconsin. See
¶16 The parties agree that Microsoft conducts business within and without Wisconsin and that Microsoft‘s business income is subject to apportionment between Wisconsin and other states.
¶17
¶18 Wisconsin franchise tax statutes include an “apportionment formula” that is used to calculate the portion of a corporation‘s income that is properly attributed to business transacted in Wisconsin and accordingly is taxable by Wisconsin. See
¶19 The version of
¶20
¶21 The DOR does not question the Commission‘s application of
¶22 Thus, the question in this appeal is whether the Wisconsin end-users of the Microsoft software in computers sold by OEMs were “licensees” as that term is used in
B. End-Users Were Not Licensees of Microsoft.
¶23 As stated,
¶24 Before considering those arguments, we note the following applicable definitions. The pertinent statutes do not contain definitions of the common terms license, licensor, licensee, sublicense, or sublicensee. But, the meanings are well known, and neither party offers a different definition of these terms. A licensor grants a portion of its rights, such as intellectual property rights in software, to a licensee through a license. See BLACK‘S LAW DICTIONARY 1061, 1062 (10th ed. 2014). A licensee may grant to another, through a sublicense, a portion or all of the rights granted to the licensee by the original license. See id. at 1652. The party holding a sublicense is known as a sublicensee. See WEBSTER‘S THIRD NEW INTERNATIONAL DICTIONARY 2276 (1993).6
1. End-Users Were Not Licensees of Microsoft as a Matter of Law.
¶25 The DOR contends that the end-users were licensees of Microsoft “as a matter of law.” More specifically, the DOR argues that, “[w]hile the [end-user agreement] is a sublicense of the right to use Microsoft‘s software, it is in fact a license with Microsoft for the end[-]user to use
¶26 But, this footnote passage is not a holding. Rather, the passage merely repeats a statement contained in a treatise on patent licensing that was cited to the Rhone-Poulenc Agro court, and that court declined to adopt the reasoning of the treatise. Id. at 1332. For that reason, alone, we reject this argument.
¶27 Moreover, the quoted portion of the treatise relied on by the DOR does not support the DOR‘s assertion. The treatise does not state that sublicensees, such as the end-users here, have direct licenses with a licensor, such as Microsoft. It states that a sublicense is, at most, “in effect” an agreement between the sublicensee and the licensor, and that effect is exclusively for the limited purpose of continuation of the sublicense when the license has been terminated.
¶28 The quoted language from the treatise does not stand for the proposition that, as a matter of law, the end-user agreements were licenses between the end-users and Microsoft.
2. End-Users Were Not Licensees of Microsoft When Viewing the Transactions as a Whole.
¶29 Next, the DOR argues that the Commission‘s determination that the end-users were not licensees of Microsoft was “myopic” and “disregard[ed] the economic reality” of these transactions. The DOR contends that, although OEMs were licensees of Microsoft, the end-users were also licensees of Microsoft when viewing the “transactions ... as a whole.” As we now discuss, the DOR‘s arguments are rejected based on: the pertinent statutory framework; the Commission‘s findings of fact regarding the Microsoft and OEM transactions and the OEM and end-user transactions; and the terms of the end-user agreements.
¶30 Initially, we note that the question of whether the end-users had licenses with Microsoft as the DOR proposes, or instead the end-users did not have a contractual relationship with Microsoft and had only a sublicense with OEMs as the Commission concluded, must be viewed in the light of the applicable statutory language. To repeat, the exception in the statutory subpart the DOR relies on,
¶31 With those precepts in hand, we conclude that the DOR‘s argument fails because both the findings of the Commission, and the terms of the end-user agreements, foreclose the assertion of the DOR that the end-users were licensees of Microsoft.
¶32 The Commission determined that the end-users were not licensees of Microsoft software, in part, because of the Commission‘s factual findings that the end-users did “not purchase software and software licenses from, and [were] not the customers of, Microsoft.” Consistent with that finding, the Commission found that there was no “direct relationship” between Microsoft and the end-users. Those findings inevitably lead to the conclusion that there was no license between Microsoft and the end-users because the end-users did not purchase anything, including a license, from Microsoft. The DOR gives no reason for us to reject those factual findings and that conclusion.
¶33 The Commission‘s determination is confirmed by the terms of the end-user agreements, the only contracts that the end-users agreed to in this factual context. As a starting point, we note that the parties do not dispute that a license is a contract. See Fraunhofer-Gesellschaft Zur Förderung der Angewandten Forschung E.V. v. Sirius XM Radio, Inc., 2019 WL 5250712, at *6 (Fed. Cir. Oct. 17, 2019) (“[W]e are confident that in the future, parties to license contracts will resolve this issue by including contract language specifically addressing the survival of sublicense rights.“). The parties also do not dispute that a sublicense is a contract. See id. (“[A] district court may [not] forgo contract interpretation and assume that a sublicense survives by operation of law.“).
¶34 Upon our independent review of the end-user agreements, we agree with the Commission‘s interpretation that those were contracts only between OEMs and the end-users. See Tufail v. Midwest Hosp., LLC, 2013 WI 62, ¶22, 348 Wis. 2d 631, 833 N.W.2d 586 (contract interpretation presents a question of law an appellate court reviews de novo). As noted in the Background section, the end-user agreements explicitly stated that the contracts were between the end-users and OEMs, and the DOR does not contend that Microsoft was a party to the end-user agreements. It then follows that there could not have been mutual expression of assent to the end-user agreements, a requirement for a valid contract such as a license, by both Microsoft and an end-user because Microsoft was not a party to the end-user agreement. See Gustafson v. Physicians Ins. Co. of Wis., Inc., 223 Wis. 2d 164, 173, 588 N.W.2d 363 (Ct. App. 1998) (setting forth the requirements for a contract). Without that basic requirement for a contract, there were no licenses between Microsoft and the end-users, and the end-users were not licensees of Microsoft.
¶35 The DOR makes three arguments concerning these transactions that, according to the DOR, demonstrate that the end-users were licensees of Microsoft. However, each contention of the DOR is overcome by findings of the Commission.
¶36 The DOR argues, first, that the end-users were licensees of Microsoft because
¶37 Second, the DOR asserts that each end-user had a license with Microsoft because each paid Microsoft “indirectly” for the right to use Microsoft software. That is based on the DOR‘s further assertion that “Microsoft receives these gross receipts [using the phrase in
¶38 The Commission rejected this argument and found that “Microsoft‘s gross receipts were not a function of use by actual end-users.” We affirm the Commission‘s finding because substantial evidence in the record demonstrates that the amounts paid to Microsoft by OEMs for the software licenses were not paid as a result of end-user payments to OEMs for the sublicenses as the DOR asserts. The Commission found, and the DOR does not dispute, that the obligations of OEMs to pay royalties to Microsoft for licenses did not depend on OEMs’ sales of the computers because OEMs were required to pay royalties to Microsoft even when OEMs did not sell the computers on which the Microsoft software was installed. Microsoft, in briefing in this court, relies on evidence in the record that Microsoft was paid by OEMs for the licenses months (if not years) before OEMs sold the computers, with licensed Microsoft software included, to the end-users. In reply, the DOR does not dispute those facts. The Commission further found, and the DOR does not dispute, that the royalties that OEMs paid to Microsoft were not tied in any way to the prices for which OEMs sold the computers, and that OEMs, not Microsoft, were entitled to the sale proceeds and profits from the sales of all of the OEMs’ computers, including any amounts attributable to the software. Thus, the licensing royalties that OEMs paid Microsoft were not paid indirectly by the end-users.
¶39 Third, again without any citation to the record, the DOR argues that the end-users were licensees of Microsoft because, in this factual setting, the only agreements between Microsoft and OEMs, or between OEMs and the end-users, with any monetary value were the end-user agreements. We reject that assertion because, as already noted, the Commission found (and the DOR does not dispute) that OEMs paid royalties to Microsoft even when OEMs did not sell the computers on which the software was installed. This uncontested finding establishes that the licenses between Microsoft and OEMs also had monetary value.
¶40 The DOR makes several other arguments, each of which we decline to accept.
¶41 The DOR asserts that the end-users were licensees of Microsoft because the licenses that Microsoft granted to OEMs “fully contemplate[d] that [] OEMS [would] grant ... sublicenses to ... [end-users].” However, the DOR does not explain how or why that fact created a licensor-licensee relationship between Microsoft and the end-users. We will not abandon our neutrality by attempting to construct an argument for the DOR. See Industrial Risk Insurers v. American Eng‘g Testing, 2009 WI App 62, ¶25, 318 Wis. 2d 148, 769 N.W.2d 82.
¶43 In addition, the DOR argues that it has “express authority to consider ... ‘any other factors that reflect the use of computer software‘” in Wisconsin, “which gives [the DOR] broad discretion in the interpretation of [
¶44 Accordingly, we reject the DOR‘s arguments that the end-users were licensees of Microsoft.
C. OEMs Were Not Agents of Microsoft.
¶45 The DOR attempts another challenge to the Commission‘s decision. It argues that OEMs acted as agents of Microsoft “for the limited purpose of granting sublicenses of Microsoft‘s computer software to end[-]users,” and, therefore, “the licenses are, in effect, between Microsoft and the end[-]users.” We are not persuaded.
¶46 “[A]n agent is one who acts on behalf of and is subject to reasonably precise control by the principal for the tasks the person performs within the scope of the agency.” Westmas v. Creekside Tree Serv., Inc., 2018 WI 12, ¶36, 379 Wis. 2d 471, 907 N.W.2d 68. The agent has the duty to act solely for the benefit of the principal in all matters connected with the agency, even at the expense of the agent‘s own interest. Losee v. Marine Bank, 2005 WI App 184, ¶16, 286 Wis. 2d 438, 703 N.W.2d 751. Whether an agency relationship exists is a question of fact that turns on the understanding between the alleged principal and the alleged agent of the relationship. See Noll v. Dimiceli‘s, Inc., 115 Wis. 2d 641, 643, 340 N.W.2d 575 (Ct. App. 1983) (citing Soczka v. Rechner, 73 Wis. 2d 157, 163, 242 N.W.2d 910 (1976)).
¶47 The DOR asserts that OEMs were Microsoft‘s agents because Microsoft “tightly control[ed] ... OEMs with regard to ... OEMs’ authority to grant [sub]licenses to end[-]users.” The Commission found that OEMs did not act “as agents of Microsoft but as actors in their own right.” More specifically, the Commission found the following in rejecting the DOR‘s agency argument, some of which are findings to which we have already referred:
- Microsoft “had no say in whether or to whom” OEMs would sell their computers and the accompanying software licenses.
- OEMs, not Microsoft, determined which components to include in their computers, chose the markets in which to sell their computers, and
determined pricing and other aspects of the sale of their computers. - OEMs were responsible for paying royalties for the Microsoft license regardless of whether OEMs ultimately sold the computers into which the Microsoft software was installed.
- The royalties paid to Microsoft from OEMs were not tied in any way to the prices at which OEMs sold the computers.
- OEMs, not Microsoft, were entitled to the sale proceeds and profits from the sale of any of the OEMs’ computers, including any amount attributable to the software.
- OEMs owed no accounting to Microsoft for the proceeds of their sale of their computers, as OEMs would if OEMs were agents that were transacting on Microsoft‘s behalf.8
- Microsoft did not provide product support to the end-users; instead, OEMs were responsible for providing any product support to the end-users.
¶48 These findings provide substantial evidence that OEMs were not Microsoft‘s agents. See Wisconsin Bell, Inc. v. LIRC, 2018 WI 76, ¶42, 382 Wis. 2d 624, 914 N.W.2d 1 (an appellate court will affirm an agency‘s finding if the finding is supported by substantial evidence). The DOR neither disputes these factual findings of the Commission nor points this court to evidence in the record sufficient to overcome the Commission‘s factual findings supporting its determination that OEMs did not act as an agent, solely for Microsoft‘s benefit, when selling their computer systems containing the Microsoft software. See Westmas, 379 Wis. 2d 471, ¶36 (describing agency relationship); Losee, 286 Wis. 2d 438, ¶16 (describing agency relationship).
¶49 The DOR then argues that, regardless of the factual findings of the Commission, OEMs were, as a matter of law, Microsoft‘s agents in this factual context. In support, the DOR relies solely on the following language from a 1947 federal Tax Court opinion: “A sublicense can be granted only where the license expressly authorizes, and the main licensee is the agent of the licensor in
negotiating a sublicense.” Federal Labs., Inc. v. Commissioner of Internal Rev., 8 T.C. 1150, 1157 (1947) (emphasis added).
¶50 We reject the DOR‘s position for several reasons. First, we are not bound by the Tax Court opinion. City of Weyauwega v. Wisconsin Cent. Ltd., 2018 WI App 65, ¶12 n.4, 384 Wis. 2d 382, 919 N.W.2d 609 (other than United States Supreme Court decisions on federal law, we are not bound by federal court decisions, but we may follow federal court decisions that we consider persuasive).
¶51 Second, the DOR‘s contention that the question of agency can be decided in this case as a matter of law is contrary to Wisconsin law on agency, under which we are to consider this to be an issue of fact. In Noll, it was argued that whether a principal-agent relationship exists is a question of law. Noll, 115 Wis. 2d at 643. We rejected that contention and held: “On the contrary, the determination of whether a principal-agent relationship exists is a question of fact for the trier-of-fact.” Id. And, as already discussed, the Commission as the trier of fact made findings that rejected the notion that OEMs were agents of Microsoft in this factual context.
¶53 In sum, we reject the DOR‘s arguments that OEMs were agents of Microsoft and, on this basis, Microsoft should be deemed to have granted licenses to the end-users.
D. Use of the Software, Alone, Does Not Satisfy the Statutory Requirement.
¶54 Finally, the DOR argues that
¶55 As with other arguments we have rejected above, the DOR‘s exclusive focus on the use of the software ignores the statutory requirement that there must be a “licensee” that uses the software in this state for
¶56 As we have already stated, it is beyond the purview of this court to redraft
CONCLUSION
¶57 For the reasons discussed above, we affirm the order of the circuit court.
By the Court.—Order affirmed.