LILIENFELD v. COMMISSIONER

JULIUS E. LILIENFELD, PETITIONER, v. COMMISSIONER OF INTERNAL REVENUE, RESPONDENT.
LILIENFELD v. COMMISSIONER
Docket No. 79298.
United States Board of Tax Appeals
35 B.T.A. 391; 1937 BTA LEXIS 885;
January 29, 1937, Promulgated

*885 The petitioner in 1930 executed a license to a corporation giving it the exclusive right to manufacture, use and/or sell products embodying certain inventions and improvements he had completed in return for royalties. On the same day petitioner assigned to his wife all benefits of the license agreement and all moneys to be received therefrom. He notified the corporation of the assignment and directed it to make all future payments to his wife. Held, the petitioner's right to receive royalties was completely assigned to his wife and the royalties paid thereafter to the wife belonged to her and were not taxable to the petitioner.

G. K. Richardson, Esq., for the petitioner.
R. N. McMillan, Esq., for the respondent.

HARRON

*391 This proceeding is for the redetermination of a deficiency in income tax for the year 1932 in the amount of $438.83. Petitioner assigns as *392 error the action of the respondent in including in the petitioner's income for the taxable year the sum of $5,907.14 representing payments of royalties on inventions of the petitioner which were paid over to his wife by him and by a company manufacturing his inventions*886 under a license agreement with the petitioner.

FINDINGS OF FACT.

The petitioner is an individual, residing at St. Thomas, Virgin Islands, formerly a resident of Winchester, Massachusetts. He is a physicist and inventor.

During the year 1932 petitioner was married and living with his wife. Petitioner had been associated with his father-in-law, Max Ginsberg, in an unprofitable business venture in which his father-in-law had lost money, the amount of which was not divulged in this proceeding. Petitioner appears to have been obligated to his father-in-law as a result.

On July 30, 1927, petitioner executed the following agreement:

KNOW ALL MEN, that I, Julius Edgar Lilienfeld, hereby, in consideration of Beatrice Lilienfeld's obtaining from her father, Max Ginsberg, a release dated July 30, 1927, of all my obligation under a certain contract dated April 12, 1924, between me and said Ginsberg, binding for ten years, of one dollar ( $1) in hand paid, and other good and valuable considerations, assigns to the said Beatrice Lilienfeld all inventions, discoveries, patent rights or applications, and/or patents which I now have or which I shall hereafter develop or acquire during*887 said ten year period subject, however to any licenses given by me or contracted to be given; also all subscription rights, shares of stock, or evidences of indebtedness which I now have or may hereafter acquire in or against any corporation formed for the holding of patents or the conducting of research by me.

Petitioner became associated with the Amrad Corporation, a company organized under the laws of Ohio, and was engaged in working on improvements on an electrolytic D.C. condenser. When his work reached the proper stage of development patents were applied for to cover petitioner's inventions in this field. There is no evidence as to the dates when petitioner began working on the condenser or on the improvements or when he became associated with the Amrad Corporation. On June 5, 1930, the petitioner entered into a license agreement with the Amrad Corporation covering improvements on the electrolytic D.C. condenser. This agreement is incorporated herein by reference. Under this agreement the petitioner granted to the Amrad Corporation an exclusive, nontransferable license to manufacture, use and/or sell, throughout the United States and Canada, products embodying these improvements, *888 in return for which the Amrad Corporation agreed to pay to the petitioner royalties amounting to at least $5,000 per year, to begin April 1, 1930, and to continue so long as *393 the improvements covered by the license should be used by the Amrad Corporation or until the end of life of any patent thereon or renewal. The license agreement could be terminated only upon default by the Amrad Corporation. Upon cancellation of the license agreement the petitioner retained the right to license others. The license agreement provides that additional inventions, improvements, and patents by the licensor may become subject to license to the licensee under the agreement, but petitioner had completed his work on the patents and improvements described in a schedule attached to and the subject of the license agreement. As part of the license agreement and attached to it was a schedule giving the dates and serial numbers of the patents, or applications for patents, covering the improvements on the electrolytic condenser which was the subject of the agreement. This schedule lists five dates of patents or applications beginning July 25, 1929, and including March 20, 1931.

The parties*889 to the license agreement were only the petitioner and the Amrad Corporation. Petitioner's wife was not a party to the agreement.

On June 5, 1930, the petitioner also executed the following assignment:

WHEREAS, I, Julius Edgar Lilienfeld, have entered into a certain agreement dated June , 1930, with The Amrad Corporation and a Research Corporation to be formed, whereby I would in due course receive certain benefits, and whereas I am indebted to my wife Beatrice Lilienfeld for certain funds advanced to me out of her portion by her father Max Ginsberg.

Now, therefore, in consideration of the premises and in payment of said advances and other good and valuable considerations, the receipt whereof is hereby acknowledged, I do hereby by these presents assign, sell, transfer, and set over to the said Beatrice Lilienfeld all the benefit of said agreement dated June , 1930 and any and all moneys to which I am now or hereafter may become entitled by reason thereof, and I hereby confirm any prior assignment to her which may in any way be effective as to said agreement or the proceeds thereof.

Petitioner notified the Amrad Corporation to make all royalty payments to his wife. In a*890 few instances payments were paid to petitioner, who deposited them to his wife's account. Otherwise, payments were made by the Amrad Corporation, and its successors, to petitioner's wife.

For the year 1932 the total royalties paid by the Amrad Corporation amounted to $5,907.14. The petitioner's wife filed a separate individual income tax return for 1932 and reported royalties in the sum of approximately $5,000, omitting through error one payment slightly in excess of $900.

The respondent has included in the petitioner's taxable income for 1932 the entire sum of $5,907.14 paid by the Amrad Corporation under the license agreement dated June 5, 1930.

*394 OPINION.

HARRON: The question in this proceeding is whether royalty payments made to petitioner's wife during the year 1932 by the Amrad Corporation, and its successors, pursuant to a license agreement, are taxable to the petitioner. Petitioner contends that he assigned to his wife property rights which produced the income here in question, whereas respondent contends that no property rights have been assigned so as to relieve the petitioner from taxation in this proceeding.

Examination of the assignments dated*891 July 30, 1927, and June 5, 1930, shows that petitioner did not assign to his wife any property rights in the inventions themselves which are covered by the license agreement with the Amrad Corporation. The assignment of July 30, 1927, was only an executory agreement to assign inventions and did not convey any property rights at the time. "An agreement to assign inventions, patents for which have not yet been secured, may be enforced only where the assignment is sufficiently definite as to subject matter." 48 C.J. 244, 245, P375. In 1927 the petitioner had not yet developed his ideas into tangible form and so was unable to convey to his wife property rights in praesenti in the inventions here in question. The assignment of June 5, 1930, attempts to confirm any prior assignments of patents and inventions to petitioner's wife, but does not cure the defects of the first effort, for there is still a failure to make the purported assignment sufficiently clear as to subject matter. Furthermore, the license agreement made by petitioner with the Amrad Corporation, on June 5, 1930, constitutes an assignment to the Amrad Corporation of all the inventions covered by the license agreement, *892 for petitioner granted to the Amrad Corporation an exclusive, nontransferable license to manufacture, use and/or sell throughout the United States products embodying the improvements on a condenser covered by patents described in the license agreement. See ; 48 C.J. 240, 241, pars. 368, 369. Petitioner's wife did not execute this license and we have found as a fact that she did not join in the license agreement. Petitioner testified that his wife gave her oral assent, but we can not see that this has any legal effect upon the issues involved.

There is another question which requires consideration. The assignment of June 5, 1930, transferred to petitioner's wife all the benefit of the license agreement and any and all moneys to which petitioner was or should become entitled by reason of the license agreement. Did this assignment constitute conveyance to the petitioner's wife of a property right which produced the income here in question? It is well settled that an assignment of income does *395 not relieve the assignor of the tax thereon, but if property rights are assigned the income subsequently arising therefrom*893 is not taxable to the assignor. See ; affd., in .

In the instant case the testimony and evidence show that petitioner intended to give to his wife property rights in his inventions and patents for a limited period, although his purported assignment of the inventions themselves failed to meet the legal requirements of an assignment of inventions and patents. However, on June 5, 1930, petitioner assigned to his wife all benefits in general of the license agreement with the Amrad Corporation. The right to receive royalty payments was the chief benefit of the agreement. The assignment of all money to be received made the meaning of "all benefits" more specific. The right to receive money under the license agreement was fixed and certain. Petitioner had completed all work on the inventions involved; the Amrad Corporation was under obligation to manufacture and sell products embracing the inventions and to pay royalties at stated rates. In our opinion petitioner did more than assign the future income to be received from the license agreement. He divested himself of the*894 right to receive the income.The license agreement was productive of the income and the assignment of all benefits of the agreement for a stated consideration, under circumstances which show a consistent intent to assign the inventions covered by the agreement, leads to the conclusion that petitioner's assignment constituted an assignment of the license agreement. It is therefore held that the royalty payments here in question should not be included in the gross income of petitioner for taxation. Cf. ; certiorari denied, ; ; certiorari denied, ; .

Reviewed by the Board.

Decision will be entered for the petitioner.

STERNHAGEN, MORRIS, MURDOCK, LEECH, TURNER, and HILL dissent.