Court: High Court of Uganda (Commercial Division).
Date of Decision: 2nd February 2024
Judge: Hon. Justice Stephen Mubiru
Case Title: Proline Soccer Academy Limited v MTN Uganda Limited, M/s CQ Saathi & Saathi, and FUFA (Uganda) Limited
Case Number/Citation: Civil Suit No. 0317 of 2011
Topics: Image Rights, Breach of Contract, Intellectual Property, Agency and Assignment of Rights
Summary of Facts:
Proline Soccer Academy Limited, a company involved in soccer promotion in Uganda, entered into an agreement on 7th September 2007 with M/s CQ Saathi & Saathi (the second defendant), an advertising agency, to procure eleven members of the Uganda national soccer team (“Uganda Cranes”) for a series of photoshoots.
The images from these photoshoots were to be used by MTN Uganda Limited (the first defendant) in their advertising campaigns for one year, ending on 8th September 2008. Proline was to be compensated with a sum of UGX 114,120,000/=.
Despite the contract’s expiration, MTN continued to use the images in its advertising and promotional activities without further consent from Proline or the players involved, leading to the instant lawsuit seeking damages for the continued unauthorized use of the images.
MTN contended that its use of the images beyond the contract’s expiration was authorised by FUFA , the national federation of football in Uganda via a sponsorship agreement and that therefore it was not liable for any image rights violations.
Issues:
- Whether Proline Soccer Academy Limited owned the image rights of the players/models in question.
- Whether the defendants breached any contract.
- Whether Proline was entitled to payment for the continued use of the models’ images beyond the contract period.
- Whether the parties were entitled to the remedies sought.
Court’s Decision:
The court held that image rights are personal to the individuals and can only be exploited in a commercial sense with their consent.
Proline, having been granted the exclusive right to use the players’ images through a licensing agreement with the players, had standing to claim against the unauthorized continued use by MTN.
The court found that FUFA (the third party) did not have the authority to assign or license the players’ image rights to MTN, as it was not directly linked to the players through employment contracts or other direct agreements under which it could be said it had assumed the authority to appropriate the players’ image rights. The continued use of the images by MTN beyond the agreed period therefore constituted a breach of the players’ image rights and the agreement between Proline and the advertising agency, as an agent of MTN.
Assignment/Transfer/Licensing: The court further gave a detailed explanation and analysis of the types of licenses that may arise in cases of this nature namely;
- Exclusive License:
- An exclusive license grants the licensee the sole right to exploit the image rights within the scope of the agreement. This means that the licensee is the only entity permitted to use the image rights, and even the licensor (the original rights holder) cannot use the image for the specified purpose any other entity has the same rights. Essentially, the licensee has full control over the use of the image rights within the agreed parameters. The exclusive license typically provides the licensee with legal standing to directly sue third parties who infringe on the licensed rights.
- Non-Exclusive License:
- A non-exclusive license allows the licensor to grant the same rights to multiple licensees. This means that the image rights can be exploited by more than one entity, and thereby the licensor retains the ability to use the image rights as well.
- Sole License:
- A sole license is somewhat of a middle ground between exclusive and non-exclusive licenses. Under a sole license, the licensor agrees not to grant any other licenses to third parties but retains the right to use the image themselves. The sole licensee is the only third party with the right to use the image rights, but unlike an exclusive license, the licensor can still exploit the image rights on their own.
In the instant case, the contract between Proline and the 9 Uganda Cranes players (2 did not sign the agreement) was unclear and shallow in its scope but the Court found that it seemed to amount to a non-exclusive license where the undersigned players retained the ability to license their image rights to other entities although there was no evidence that they did so.
Damages: In assessing the quantum of damages to award to the plaintiff, the Court engaged the “lost license fee” method which entails an assessment of the the revenue or financial gain that the claimant could have earned if the image rights had been properly licensed or if the contract had been renewed.
Juxtaposed to the “lost license fee” method is “the income approach” where the Court will
identify and predict future revenue streams from commercialising the person’s image and then discount them into the present while applying certain risk factors such as injury, early retirement and fall from grace, etc.
Court emphasised that these are based on the abilities and expected performances of the sports persons concerned and will be applied on a case-by-case basis based on the circumstances.
In the present case, Court awarded UGX 570,600,000 as general damages having found that the violation period was 6 years and the expired contract consideration was UGX 114,120,000/=.
Ratio Decidendi:
The court held that the right to one’s image (likeness,name, voice, etc) is an unnegotiable personal right protected under the right to privacy enshrined in the Constitution’s Article 27 and its ownership cannot be transferred to another person beyond an assigned or licensed commercial exploitation or exercise of the right with the person’s explicit consent.
Under, the principle of “nemo dat quod non habet” (no one can give what they do not have) FUFA could not assign or license the players’ image rights to MTN because it did not possess them.
Law Applied:
- Article 27 of the Constitution of Uganda, 1995 (Right to Privacy)
- The Data Protection and Privacy Act, 2019
- The Copyright and Neighbouring Rights Act, 2006
- FIFA Regulations on the Status and Transfer of Players
- Proactive Sports Management Ltd v. Rooney and others [2010] EWHC 1807 (QB)
- Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc, 202 F.2d 866 (2d Cir. 1953)
- Asege Winnie v. Opportunity Bank (U) Ltd and another, H. C. Civil Suit No. 756 of 2013
Quote: “Since the only employment relationship in this structure is that between the club and the player,
the extent to which a club, a league or FUFA can conclude an agreement with a third party as regards
the use of a player’s name and likeness would depend on the agreement between the player and
the club. As the image rights of the soccer player originally belongs to himself, preventing the
player’s image rights from being exploited by anyone without the player’s consent, FUFA cannot
obtain the image rights from clubs and leagues unless the clubs or leagues have obtained the image
rights with regards to names and likeness from the players, and through their agreements with the
players are in positions to negotiate conditions for FUFA to use the players’ image rights… Regardless of consent, the individual’s image is considered to be an inalienable, precious right over which control could never (and should never) be lost by the owner. Considering the temporal limitation in the use of their
images that was given to the 1st defendant, through its agent the 2nd defendant, under the agreement
dated 7th September, 2007 the permission that had previously been granted to the 1st defendant had
lapsed on 8th September, 2008 and cannot afford the 1st defendant defence to its continued use of
the 11 participating players beyond that date. The consent to the publication of one’s image constitutes a unilateral transaction, having as its object not the very personal and inalienable right to the image, which as such cannot be negotiated, but only the exercise of this right. Although it may occasionally be included in a contract, the consent nevertheless remains distinct and independent from the agreement that contains it.” – Hon. Justice Steven Mubiru
Counsel:
- For the Plaintiff: M/s Omongole & Co. Advocates
- For the 1st Defendant: M/s Kampala Associated Advocates
- For the 2nd Defendant: Unknown.
- For the 3rd Party: M/s Ochieng Associated Advocates and Solicitors
Comments
This case highlights the protection of image rights, particularly in the context of the business of sports and endorsements. The decision affirms that image rights are inherently personal and can only be exploited especially in the commercial sense with the explicit consent of the person.
This case is one of the handful of case precedents we have in Uganda in the area of enforcement of image rights.
Read more about image rights in Uganda in this Article.
