The Commercial Court has ordered MTN Uganda and the Federation of Uganda Football Associations (FUFA) to pay sh570.6m to Proline Soccer Academy over the violation of its sports image rights.

High Court judge Stephen Mubiru ruled that FUFA erroneously granted MTN Uganda Limited the right to use the images licenced to Proline Soccer Academy Limited for five years.

“The plaintiff has proved that the defendants violated the image rights licensed to it by the 11 participating players,” Mubiru ruled.

The judge directed that the sh570.6m will attract an interest rate of 6% per annum from the date of filing the suit (September 6, 2011), until payment in full.    

The court heard that MTN sponsored FUFA between the years 2007 to 2013.

However, for the duration of that sponsorship, FUFA had erroneously granted the telecommunication company the right to use the images licenced to Proline, yet the agreement between it (FUFA) and Proline, had expired on September 8, 2008.

This prompted the court to rule that MTN for a period of five years, in violation of the image rights, used the images which had been exclusively licensed to Proline.

“The defendants were supposed to pay the plaintiff at the rate that had been negotiated under the expired contract had it been granted an extension of that agreement to commercially use and exploit the sports image rights for that duration,” Mubiru noted.

In a ruling dated February 2, 2024, the judge noted that the agreement does not expressly reserve any rights in the nine signatory licensors, to market their images individually or as a team.

“The licensee was granted beneficial ownership of the signatory licensors’ proprietary rights for purpose of marketing them for commercial use in the promotion and advertisement of products and services,” he observed.

Mubiru explained that a licensee with sufficient proprietary interest has a standing regardless of whether the right to sue is expressly granted in the licensing agreement or not.

Conflict

The judge noted that the conflict is between the copyright vested in the author of a photograph that was taken of the 11 participating players, and then used without their consent, but rather with the permission of FUFA, for commercial purposes of the MTN Uganda on one hand, and the image rights belonging to the subjects of the photos, on the other.

According to the judge, this being a case where there is no express or implied consent by any of the 11 participating players to use their images by MTN, copyright cannot prevail over image rights.

“When there is doubt that the person’s consent has been granted for such use, image rights prevail over copyright law. An exclusive license when granted allows the person the same rights as that of the owner of the image right. Therefore, the issue is answered in the affirmative,” he ruled.

The judge ruled that Proline owns the players’/models’ image rights and is capable of suing for their enforcement.