*980 1. An agreement whereby a patentee "does grant, bargain, sell, convey, transfer, assign, set over and deliver" certain patent applications to a corporation in consideration of the latter's promise to pay over to the patentee amounts realized from the manufacture and sale of the patented products and from licensing agreements in respect of the patents, followed by recordation both of the general assignment and the individual assignments of each patent and patent application, held, to be contract for the sale of a capital asset, and moneys received thereunder by the seller and/or his assignee are capital gains under section 117 of the Revenue Act of 1934, rather than royalties.
2. Payments made under a contract of sale, which was assigned by the seller to a trust of which petitioner is the income beneficiary, constitute capital gains in petitioner's hands and are taxable at the percentage rates provided by section 117(a) of the Revenue Act of 1934.
3. Where a trust instrument provides that the trust income is to be paid over to the beneficiary upon receipt and that legal expenses are to be paid by the trustee out of such income, the expenses so paid are not to be included*981 in computing the beneficiary's taxable net income. Augusta Bliss Reese,29 B.T.A. 565">29 B.T.A. 565, followed.
*580 This is a proceeding to redetermine deficiencies in income tax for the calendar years 1934 and 1935 in the respective amounts of $51,686.95 and $24,121.77. The issues are whether payments made under a contrct of sale, which was assigned to a trust by the seller, constitute capital gain to the beneficiary of the trust and whether petitioner, as beneficiary of a trust, is taxable in respect of amounts paid out by the trustee for legal services.
*581 FINDINGS OF FACT.
Prior to May 12, 1930, Ernest Hopkinson, the husband of petitioner, was the owner of certain inventions pertaining to the manufacture of tires and tire fabrics. He had received United States and foreign letters patent on some of these and had filed applications for both domestic and foreign letters patent as to others. On May 12, 1930, Hopkinson entered into a written agreement with United States Rubber Co. which recited that*982 he was the "seller" and the company was the "purchaser" of certain patents and inventions and also mentioned a desire to terminate a prior license agreement between Hopkinson and the company. The agreement reads in part as follows:
The Seller has granted, bargained, sold, conveyed, transferred, assigned, set over and delivered and by these presents does grant, bargain, sell, convey, transfer, assign, set over and deliver unto Meyer Rubber Company, a New Jersey corporation and a subsidiary of the Purchaser, the following:
[There then follows a list of the patents and patent applications covered by the agreement.]
and the Seller agrees that he will execute on behalf of the said subsidiary or any assignee of same or successor assignee, all necessary or proper instruments and will do all other or further acts which may be required by the Purchaser or said subsidiary or assignee or successor assignee for the full and complete transfer of all the right, title and interest of the Seller in said Letters Patent and the inventions subject thereof to said subsidiary or assignee or successor assignee.
The Rubber Co., as "consideration for the sale of all the present inventions and*983 improvements referred to", agreed to pay Hopkinson certain amounts in respect of each tire casing manufactured by it or its subsidiaries, a fraction of any royalties received by the Rubber Co. from licensees, and other amounts representing portions of proceeds of sales of weftless fabrics, in so far as the tires and fabrics were made under the Hopkinson patents. In case the Rubber Co. should desire to sell any of the patents or in the event of Hopkinson's death, the Rubber Co. could resolve all further payments, due on the patents under the contract, with lump sum payments to be arrived at either by agreement or by appraisers appointed by the parties. Pursuant to this agreement, Hopkinson executed formal assignments of his patents and patent applications to the Rubber Co., and the assignments were thereafter duly recorded. Hopkinson was not in the business of selling patents on or prior to May 12, 1930.
Prior to July 17, 1932, Hopkinson received, pursuant to the agreement, amounts in excess of the cost or other basis to him of the inventions, patents, and patent applications covered by the agreement. *582 He did not report any profit derived by him under the agreement*984 on the installment basis.
On July 19, 1932, Hopkinson, without consideration and as a gift, executed an indenture of trust whereby he transferred to himself as trustee the above mentioned agreement with the Rubber Co. The beneficiary of the trust was Bessie B. Hopkinson, the petitioner. The indenture gave Hopkinson, as trustee, power to ask for and receive all royalties and payments due under the agreement and to take any legal steps necessary or proper for the complete enjoyment of the assigned contract and the protection and enforcement of the trustee's rights thereunder. In addition, with respect to the assigned contract, the trustee was to have the right to exercise all rights, powers, and privileges which it would have been lawful for the settlor to exercise during the term of the trust had the contract not been assigned. The payments received by the trustee pursuant to the assigned contract were, under the trust, to be distributed to petitioner upon receipt by the trust, except that lump sum payments were to be invested and the income therefrom paid over to petitioner quarterly. The trustee was authorized to employ counsel and to pay their compensation out of trust income. *985 The trust was to be irrevocable and was to terminate at the end of three years, or upon the death prior to that time of either the settlor or petitioner.
The trust indenture was modified without consideration on December 30, 1932, by a written agreement between Hopkinson and petitioner. The principal material changes were to provide that the royalties and other payments should be paid over to petitioner during her life and that upon her death all rights under the contract with the Rubber Co. should pass to the lawful surviving issue of the settlor and the trust should terminate. If any such child were under age at petitioner's death, the trust continued as to him until he should reach the age of 21, with interim discretionary payments of income for his support and maintenance. Russell Hopkinson was to become successor trustee if Ernest Hopkinson should die prior to the termination of the trust. In all other respects the original trust indenture remained operative.
Ernest Hopkinson died a resident of the County and State of New York on May 3, 1933. Following his death, Russell Hopkinson became trustee under the indenture of trust as modified.
On August 9, 1934, Russell*986 Hopkinson, as trustee, and the Rubber Co. entered into an agreement dated as of January 1, 1934, modifying the original agreement of May 12, 1930, between Ernest Hopkinson and the Rubber Co. The modification provided for payments of various sums in settlements of disputes between the parties and for other amounts based on moneys received by the Rubber Co. from its licensees.
*583 During 1934, the trustee received $158,850.97 from the Rubber Co. pursuant to the contract as modified, and during 1935, $92,371.14.
The fiduciary returns for 1934 and 1935 of Russell Hopkinson as trustee treated as taxable income only a portion of the above mentioned amounts. The portion of the amount which was received with respect to each of the letters patent and patent applications which was included as taxable income was determined in accordance with the provisions of section 117 of the Revenue Act of 1934, on the theory that the patents and patent applications were capital assets and were held by the taxpayer for the length of time elapsing between the dates of the applications for the various patents and the date of the sale thereof, namely, May 12, 1930. The respective holding periods*987 are not in issue, and it is stipulated that the various patents and patent applications were held for the periods shown in the stipulation of facts.
In computing the net income of the trust for the year 1935, the trustee deducted from the gross income thereof reported on the return the sum of $7,500, representing legal expenses. This sum was paid out by the trustee during 1935 from trust income. The legal services consisted of tax advice, advice as to the modification of the agreement with the Rubber Co., and counsel as to the assignment of petitioner's beneficial interest to her children.
In both years petitioner reported in her individual returns the net income reported by the trustee in his fiduciary returns.
OPINION.
LEECH: The issues for decision are (1) whether payments, made under the contract between Hopkinson and the Rubber Co. and received by petitioner as beneficiary of the trust of which the contract formed the corpus, are ordinary income or capital gain in the hands of petitioner, and (2) whether payments made by the trustee for legal services are includable in petitioner's net income under section 162(b) of the Revenue Act of 1934.
Petitioner contends*988 that, since payments under the contract between her deceased husband, Ernest Hopkinson, and United States Rubber Co. were capital gains as to her husband, they are also capital gains to her as beneficiary of a trust, the corpus of which, as a result of an assignment from Hopkinson to the trustee, comprises the said contract. In his deficiency notice respondent took the position that the payments under the contract were royalty payments rather than payments of consideration for the sale of a capital asset, and hence were taxable as ordinary income. On brief, he does not press this contention, but instead urges that, since there was no sale or exchange by petitioner or the trustee, she is not entitled to the percentage provisions of section 117 of the Revenue Act of 1934.
*584 We think it is clear that Ernest Hopkinson sold his patents and patent applications to the Rubber Co. in 1930 and that all payments received by him under the contract of sale resulted from the sale of capital assets, were not royalties, and were, so far as he was concerned, taxable at capital gain rates. As petitioner aptly says in her brief: "It is obvious that the parties to the 1930 agreement intended*989 to effect a sale of the inventions covered thereby. The language of the agreement, the designation of the parties and the desire to terminate the then existing license agreement, make this conclusion inescapable. It is bolstered up by the fact that in addition to the general assignment of the patents provided for by the 1930 agreement, the patents were individually assigned by HOPKINSON and the assignments were recorded in due course. It is impossible to conceive of what else could have been done or provided for which would have more clearly indicated the intention of the parties to the contract and which would have more definitely characterized the nature of the transaction covered thereby." See ; affd., ; certiorari denied, ; ; ; ; ; *990 ; ; ; . See also . As far as Ernest Hopkinson was concerned, moreover, such payments were taxable to him in the years received. .
The question remains, however, as to whether petitioner is entitled to treat receipts under the contract as capital gains. It is to be noted at the outset that she is entitled to the percentage provisions, if the trustee is. ; affd., ; .
The portions of section 117 of the 1934 Act which are here relevant are set out in the margin. 1 The dispute really centers about the meaning *585 of the words in subsection (b), "property held by the taxpayer." Is petitioner to be denied the benefit of the percentage provisions because neither she not the trustee sold the patents and patent applications, but only became entitled to the proceeds of*991 the sale after it was made through the assignment of the contract?
*992 Research has disclosed no case in point, although there are intimations in , to the effect that a trustee in somewhat similar circumstances might compute gain at capital rates. We think, however, that the scheme of the revenue acts and certain analogous doctrines entitle petitioner to treat the payments under the contract as capital gains. Section 117(c)(2) provides that in determining the period for which a taxpayer has held property however acquired there shall be included the period for which the property was held by any other person, if under section 113 such property has the same basis in whole or in part in the taxpayer's hands as it would have in the hands of such other person. Under section 113(a)(3), if the property was acquired after December 31, 1920, by a transfer in trust, the basis is the same as it would be in the hands of the grantor. In passing upon the effect of an earlier counterpart of section 117, section 206 of the Revenue Act of 1921, the Court in *993 , enunciated the rule (which was subsequently embodied in section 117(c)(2) of the 1934 Act) that the donee was deemed to have held the stock for the length of time it had been held by the donor, and for the purpose of computing gain on the sale of such stock was considered "as having assumed the place of the trustor." (Emphasis supplied.) The Court also held:
* * * In respect of the legislative purpose to lessen hindrance caused by high normal and surtaxes, there is no distinction between gains derived from the sale made by an owner who has held the property for more than two years and those resulting from one by a donee whose tenure plus that of the donor exceeds that period.
See also , and .
There is thus discernible a Congressional intent to treat a donee as standing for income tax purposes in the shoes of the donor, explicit in regard to basis and holding period, and inferential as to capital gains. Decisional analogies are to be found in the cases of installment sales, where, upon the sale*994 of an installment obligation, the purchaser of that obligation is required to report income in the same manner as the vendor, ; , and in the case of a reorganization, where the earnings of a predecessor corporation retain their character as earnings in the hands of the recipient company, ; certiorari denied, .
*586 In contemplation of law, every payment made by the Rubber Co. was, as we have pointed out, part of the purchase price of a sale of capital assets. The character of these payments in the hands of the recipient was not changed by the fact that the recipient took under an assigned right. Petitioner assumed the duty and obligation of reporting income arising out of the contract. ; ; ; *995 . We conclude that she likewise received from the assignor the right to report that income at capital rates.
The second issue is whether in computing the net income of the trust subject to taxation in the hands of petitioner the inclusion of $7,500 paid by the trustee for legal fees is proper. It has been held that where the tax liability of the income beneficiary is in issue, rather than the liability of the trustee, and the trust instrument requires the trustee to pay the particular expenses out of trust income, the income beneficiary is taxable only with respect to the net amounts actually distributed to him, regardless of whether as to the trustee the deduction in question is allowable. ; ; . Without deciding, therefore, whether the trustee was entitled to this deduction, upon the authority of the foregoing cases we sustain petitioner and hold that she is taxable only in respect of the amounts actually distributed to her. In reaching this conclusion we have not*996 neglected respondent's argument to the effect that some of the legal services related to petitioner's right to assign her interest to her children and the resulting tax liabilities, and hence she constructively received a part, if not all, of the $7,500 fee. We think that the tax status and assignability of all interests under the trust were of equal interest to the trustee and fell within the class of objects for which the trustee was specifically authorized to procure legal assistance. Respondent is concluded, therefore, by
Decision will be entered for the petitioner.
Footnotes
1. SEC. 117. CAPITAL GAINS AND LOSSES.
(a) GENERAL RULE. - In the case of a taxpayer, other than a corporation, only the following percentages of the gain or loss recognized upon the sale or exchange of a capital assets shall be taken into account in computing net income:
* * *
(b) DEFINITION OF CAPITAL ASSETS. - For the purposes of this title, "capital assets" means property held by the taxpayer (whether or not connected with his trade or business), but does not include stock in trade of the taxpayer or other property of a kind which would properly be included in the inventory of the taxpayer if on hand at the close of the taxable year, or property held by the taxpayer primarily for sale to customers in the ordinary course of his trade or business.
(c) DETERMINATION OF PERIOD FOR WHICH HELD. - For the purpose of subsection (a) -
* * *
(2) In determining the period for which the taxpayer has held property however acquired there shall be included the period for which such property was held by any other person, if under the provisions of section 113, such property has, for the purpose of determining gain or loss from a sale or exchange, the same basis in whole or in part in his hands as it would have in the hands of such other person. ↩