This is an informal case summary prepared for the purposes of facilitating exchange during the 2025 WIPO IP Judges Forum.
Session 6: Personality Rights
High Court of Uganda [2024]: Pro-Line Soccer Academy Limited v. MTN Uganda Limited and M/s CQ Saathi & Saathi & FUFA (U) Limited, UGCommC 13 (Civil Suit 317 of 2011).
Date of judgment: February 2, 2024
Issuing authority: High Court of Uganda, Commercial Division
Level of the issuing authority: First Instance
Type of procedure: Judicial (Civil)
Subject matter: Others
Plaintiff: Pro-Line Soccer Academy Limited
Defendants: 1. MTN Uganda Limited.
2. M/s CQ Saathi & Saathi
Third party: Federation of Uganda Football Association (FUFA).
Keywords: personality rights, image rights, licensing
Basic facts: The plaintiff secured authorization from the first eleven players of the national soccer team (the Uganda Cranes) to license their images to a telecommunication company (the 1st defendant, MTN Uganda) for promotional use in its business for one year at the price of UGX 21,120,000 (€ 5,155.62). The contract was negotiated by an advertising agency, M/s CQ Saathi & Saathi, the 2nd defendant.
The images were used over the duration of the contract in advertising across multiple media platforms, including print media, electronic media, and online. MTN Uganda had a separate sponsorship agreement with the national football federation (FUFA) under which FUFA granted MTN the right to feature images of the Uganda Cranes team members, individually or collectively, in its marketing.
When the contract with Pro-Line ended, MTN Uganda continued to use the players’ images in its advertising and promotional activities for the next five years, prompting Pro-Line to sue seeking to recover UGX 342,360,000 (€ 83,573.84) on the grounds that using the images after the contract expired infringed the image rights of the players.
MTN Uganda argued that in the agreement with Pro-Line, the plaintiff unequivocally agreed to transfer the copyright, performing rights, and all other rights in the advertising material in the photographs. It contended that by that agreement, it obtained property in the images, and their continued use had not violated any rights of the plaintiff. Furthermore, continued use was authorized under the separate contract it had with the national institution responsible for the development, management, and regulation of the game of soccer in Uganda (FUFA). The federation was entrusted to promote and organize international matches for the National soccer team, the Uganda Cranes, by virtue of which, it possessed the rights to the images of the soccer players as individuals and also collectively as the national team.
For its part, Saatchi & Saatchi said their only role had been to act as agent to get the initial contract signed. After that, the firm had no further involvement.
Held: Using a player's image for commercial purposes, such as advertising, requires explicit consent. Such consent cannot be implied merely from the acceptance of the national team call-up by FUFA. A player does not impliedly consent to the use of his image by FUFA for purposes of advertising the tournament and also in advertising the commercial interests of the sponsors of the tournament. In situations of conflict, the image rights of the individual take precedence over the copyright of a photograph or recording. Copyright cannot prevail over image rights when there is doubt that the person’s consent has been granted for such use. MTN Uganda’s continued use of the images after expiry of the contract it had with the plaintiff constituted an infringement of the players’ image rights. Judgment was entered for the plaintiff and UGX 570,600,000 (€ 139,289.74) awarded as general damages.
Relevant holdings in relation to Personality Rights:
¾ “Image rights” address the proprietary aspects of a player’s personality, and the right to control, license, exploit and prevent third parties from making use of attributes related to the player’s image. This includes: the player’s name, nickname and / or initials, the player’s squad number, the player’s image and / or photograph, the player’s voice, the player’s autograph, the player’s social media handles, and all other characteristics that are unique to the player.
¾ The image has two characteristics as: a personal right and a property right. Image rights are protected as personal rights, therefore are non-transferable to a new owner. The ownership is an immutable condition that protects the player’s image as a human right, and it is not possible to waive a fundamental personal right. This means that the holder of the right to one’s own image cannot license it fully, only the economic aspect of these rights may be licensed.
¾ Consent to the use of a sportsperson’s image rights in either an individual or collective context by the club or national association must be unequivocal. As the absolute owner of the image, the player can license a company, a third person, or a club to exploit their image, consenting through an image rights licensing agreement.
¾ 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.
Relevant legislation:
Section 4 of The Copyright and Neighbouring Rights Act, 2006 automatically confers a property right on the author of original works, which can include literary, dramatic, musical or artistic work.
Section 4 of The Trademarks Act, No. 7 of 2010 provides that sufficiently distinctive and unique trademarks comprising names, slogans, or logos may be registered.
Article 27 of The Constitution of the Republic of Uganda, 1995 provides protection of the right to privacy.
Article 26 of The Constitution of the Republic of Uganda, 1995 provides protection of the right to property.
Section 3 (1) (a) of The Limitation Act, a party cannot bring a suit based on a contract more than six years from when the cause action first accrues.
Section 26 (2) of The Civil Procedure Act; award of interest on monetary decrees.
Section 27 (2) of The Civil Procedure Act; award of costs to a successful litigant.