Price is an important part of all contracts, and IP transactions are no exception. Because most transferable IP assets are unique, it is essential to clearly define the price of the contract, because if there is a disagreement, it is difficult to apply civil law mechanisms to determine this. As in Wistron, Mondis objected to the deference and the court sided with Mondis, but for various reasons. In that case, the judgment concerned two Innolux companies — the Taiwanese parent company and a U.S. subsidiary — and the two defendants were therefore jointly liable for the judgment. The court stated that “if foreign and American companies are jointly responsible, U.S. judgments must be paid in full, regardless of foreign withholding taxes.” Mondis v. Innolux, supra, referring to QinetiQ Ltd against Samsung Telecomms. That`s right. L.P., Case 2:03-cv-22 (E.D.
Tex). 7 Sept. 2005). As in the Wistron case, the court`s decision forced Innolux to pay Taiwan mondis taxes. Mondis v. Chimei-Innolux (“Innolux”) participated in the same NPE and Innolux, another Taiwanese manufacturer of consumer electronics products. In this case, there was no licensing agreement. Instead, Mondis sued Innolux for patent infringement and obtained a final judgment on more than $15 million in damages, as well as ongoing licensing charges.
The court then planned to hold a hearing to resolve several issues related to the final judgment. In particular, the court required Innolux to comply with the “no reduction or deduction” judgment, but Innolux is legally required to withhold 20% of the payments and mondis should be entitled to a 50% refund on all taxes withheld under a double taxation agreement between the United Kingdom (Mondis` domicile) and Taiwan. If a foreign donor grants a German licensee the use of its software for the intended purpose, the royalties paid do not fall within the scope of the withholding tax. The financial benefits generated by greater profitability, such as licensed process optimization software, do not constitute additional commercial use if the software was used simply in accordance with their destination. However, such a change in the supply contract will result in licence fees paid under the licensing agreement being included in the customs value of imported goods only if the licence agreement subsequently changes. The software sub-license by the taker within its group of companies is also a destination if the license has been agreed as a business license and all members of the group use the software in accordance with their destination. The same principle applies to databases. A broad right of commercial use in database licenses could be the sublicensing right of the database, regardless of its third-party customers. The company`s non-operational result, in the form of property rights received without consideration, appears only if there is evidence of transfer or acquisition of intellectual property rights.
This can be confirmed by determining the rights holder`s willingness to transfer property rights that may be expressed in a licensing agreement or in some other form (for example). B, written permission from the rights holder to use a trademark). Moreover, this expression of will cannot be supported by documentary evidence and may arise from an existing business relationship between the parties, including interdependence (for example. B if a party to the licensing agreement has a direct or indirect interest in the capital of another party).