Major court decision on image rights benefits Ugandan soccer players

21 March 2024 · Carmel Rickard

Members of Uganda’s national soccer team from the period around 2007/8 have just been awarded a payout against MTN Uganda by the commercial court. The telecom giant had a year-long contract with Proline, the players’ originating development soccer club, allowing it to use the players’ images for advertising. But MTN had continued to use their images even after that contract expired on the basis that it had a sponsorship agreement with Fufa, soccer’s governing body in Uganda. The players then challenged MTN in court, through Proline, and have now won a significant damages award. But the judgment exposed some serious flaws in the way that Fufa has approached the question of using the image rights of its senior players, and the court commented that this is a ‘case study’ for why Fufa needs to sort out its contractual arrangements with senior players.

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What started as a dispute between top Ugandan soccer players and MTN over the use of the players’ images for advertising has had an unexpected and potentially far-reaching side effect. The court has found that the basic system under which soccer’s governing body in Uganda has been obtaining players’ image rights is flawed and does not in fact give it the right to make contracts with third parties for the use of the players’ images.

The case against the Federation of Uganda Football Associations (Fufa), Uganda’s top soccer body, was brought by the Proline Soccer Academy, and their legal dispute was recently decided by the commercial court.

Proline, acting on behalf of 11 members of the national soccer team, the Uganda Cranes, sued MTN and advertising firm Saatchi & Saatchi, with Fufa cited as a third party. The claim relates to an arrangement made by Proline that MTN could use images of the players for advertising and promotional activities for a year, ending 8 September 2008. In exchange, Proline would be paid UGX 114,120,000. Part of this deal would be in the form of a certain amount of ‘free’ air time for the players for the duration of the contract.

Images used after the contract expired

But when the contract ended, MTN continued to use the players’ images in its advertising and promotional activities, prompting Proline to sue on the grounds that using the images after the contract expired infringed the image rights of the players. Proline therefore claimed UGX 342,360,000 for violation of their rights plus general damages for breach of contract, interest and costs.

MTN reacted by saying that since May 2007, it had a ‘sponsorship arrangement’ with Fufa, under which Fufa granted MTN the right to feature images of the Uganda Cranes team members, individually or collectively, in its marketing. The rights granted by Fufa meant that MTN was entitled to use the images, and the rights of Proline were not violated.

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. (The court agreed with its argument, and dismissed the claim against Saatchi, with costs.)

Right to control commercial use of one’s own image

Fufa’s position was more interesting. It said it had nothing to do with the initial contract involving Proline. But because of its position as the national institution responsible for the development, management and regulation of soccer, it had a mandate to organise international matches for the Uganda Cranes, ‘by virtue of which it has rights to the images of the individual players as a national team.’ Fufa said that its own contracts with MTN were distinct and separate from the disputed contract between MTN and Proline.

Proline’s legal team argued that the individual soccer players had the right to control the commercial use of their images. Their only contract had been with Proline who they authorised, on their behalf, to arrange the deal of 7 September 2007, valid until 8 September 2008.

Once that period expired, MTN had no right to continue using the images of the players without the consent of Proline. Further, MTN had generated ‘a lot of revenue’ by its unlawful action of continuing to use the players’ images, in violation of the contract, right up to 2013.

Deep dive into image rights in sports law

To justify its use of the images after the end of the contract with Proline, MTN pointed to its sponsorship deal with Fufa. But Proline’s lawyers questioned whether Fufa had in fact acquired the private image rights of the players ‘simply by being a national regulator of the sport’.

The decision of the presiding judge, Stephen Mubiru, involved a deep dive into sports law, particularly the issue of players' image rights.

He said that the dispute required him to analyse how Fufa had acquired the image rights of the players and whether Fusa was legally able to grant MTN the right to use the images in its advertising and promotional material.

How were players’ image rights acquired?

Fufa doesn’t have individual football players as direct members, instead, players are affiliated via their respective clubs, and it is the clubs that have direct membership of Fufa. This in turn means that the only way that Fufa can acquire players’ image rights is through the players’ employment contracts, either directly with Fufa or indirectly with their respective clubs.

Typically, clubs hold the mandate to negotiate and sell name and likeness rights of its players. The judge closely examined how this was done under the English Premier League and soccer’s world governing body, Fifa (the Federation Internationale de Football Association).

In the case before him, however, no real evidence was led explaining the practice in Uganda. Without any evidence or elaboration, Geoffrey Massa, team manager for the Uganda Cranes since 2019, said that at club level, the ‘sponsor of the club owns the image rights’.

The court therefore presumed that the two sponsorship agreements between MTN and Fufa were the sole source of MTN’s claim to have authority over the players’ image rights.

Clubs must first obtain image rights from players

But since a player’s image rights originally belonged to the player, Fufa couldn’t obtain those rights from its member clubs unless the clubs had obtained image rights from the players.

There was also no employment relationship between Fufa and a player chosen for the national team: the only employment relationship in the soccer structure was between the club and the player, so the extent to which a club or Fufa could conclude an agreement with a third party about using a player’s name and likeness would depend on the agreement between the player and the club. Fufa couldn’t obtain image rights from clubs unless clubs had first obtained these rights from their players, and then, through these agreements with players, the clubs were able to negotiate conditions for Fufa to use the players’ image rights.

Giving evidence in the dispute, the chief executive of Fufa, Edgar Suubi, said it was ‘common practice’ that when someone was ‘summoned to the national team’, Fufa would gain that player’s image rights by virtue of the player being so summoned. But there was no other witness or evidence about this practice, said the judge. To be accepted as a ‘usage of trade’, the practice claimed by Suubi would have to be proven by evidence, including evidence that players, called to the national team, had ‘always’ known about this arrangement and had the opportunity to object to it, but had accepted the arrangement without objection.

‘No evidence’ that players agreed to images being used

No such evidence was shown in court, however, and the judge said he had thus not found any basis to hold that it was ‘implied in the fact of being called to the national team’ that players consent to the use of their images by Fufa for marketing and the commercial interests of the sponsors.

He added, ‘This suit is an excellent case study for why it is crucial for international soccer players and Fufa to have settled contractual provisions relating to the commercial use of the players’ images by Fufa when the player is on … international duty.

‘Considering the personal life, privacy, work, skills and daily activities of a soccer player, legal protection of the player’s image is essential. Their image is part of their power and needs to be protected by limits and obligations through contractual clauses guaranteed and consented to’ by players themselves.

Fufa had ‘no capacity to assign’ these rights

However, since he had found that there was no contract on image rights with any of the team players, nor evidence of any practice of implied consent, this meant that the contracts between Fufa and MTN, in which Fufa gave MTN rights to feature the team in its advertising, were invalid.

Fufa was effectively giving MTN a right that Fufa had ‘no capacity to assign’ since none of the players had given Fufa that right, directly or indirectly.

The law was clear that no one could ‘give what they do not have’. ‘The true owner of the rights does not lose his or her rights simply because of the wrongful act of an imposter who transfers those rights to an innocent third party who acted in faith in paying money to the imposter for those rights.’

He concluded that there had been no express or implied consent by any of the 11 players to the use of their images by MTN in its marketing. Proline was an ‘exclusive licensee’ and thus owned the players’ image rights and was legally capable of suing for their enforcement.

MTN’s violation of players’ rights ‘proved’ - judge

MTN was in breach of its contract with Proline, he found. But would it have to pay for what the court found was its unlawful continued use of the players’ images outside the limits of their contract?

There was no defence against MTN’s continued use of the images beyond the end of its contract with Proline. ‘Although the right of publicity is commonly associated with celebrities, every person, regardless of how famous, has a right to prevent unauthorized use of their name or image to sell product.’

The violation by MTN of the players’ image rights had been proved, the judge concluded. For five years, in violation of the players’ image rights, MTN had wrongly used the players’ pictures, after Fufa ‘erroneously granted’ it the right to use them.

In the end, the calculation was simple. The court used the original contract figure of UGX 114 120 000 for a year’s image rights negotiated by Proline and multiplied it by the five years during which MTN wrongly used the images for their marketing. The total, UGX 570 600 000, was thus awarded against MTN, to Proline for the players, with interest at 6% from 2011 until payment in full, as well as the legal costs.

Carmel Rickard

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