A commentary of Proline Soccer Academy Limited v MTN Uganda Limited, M/s CQ Saathi & Saathi & FUFA (U) Limited (Civil Suit 317 of 2011) [2024] before Hon. Justice Stephen Mubiru.
What was the background / facts?
On 4th July 2007, 8 members of the national soccer team (the Uganda Cranes) and the Proline (the plaintiff) entered into an agreement where Proline was authorised to enlist contracts for the commercial use of the player’s images at a negotiated consideration.
Later on 7th September that same year, Proline and CQ Saathi & Saathi (the 2nd defendant) entered an agreement where Proline undertook to procure 11 members of the Uganda Cranes to pose for a series of photoshoots the products of which were to be used exclusively in advertising and promotional activities of the MTN (the 1st defendant) for a period of one year, expiring on 8th September, 2008. It was also agreed that for the image rights of the 11 team members of the Ugandan Cranes so procured, the Proline was to be paid a certain sum of money. As agreed, Proline availed CQ Saachi & Saachi the 11 Uganda Cranes team members who then were engaged in episodes of photoshoots.
The photos generated were over the duration of the contract used in advertising MTN’s across multiple media platforms. Despite the contract having expired on 8th September 2007, MTN continued to use the images in its advertising and promotional activities.
Proline therefore instituted a suit against MTN Uganda, Saachi & Saachi claiming that MTN’s continued use of the images after the expiry of the contract without its consent, constitutes an infringement of the image rights vested in it by the eleven “Uganda Cranes “ team members. MTN Uganda instituted third party proceedings against FUFA (the Uganda soccer governing body) on account of the indemnity clause contained in the Sponsorship Agreement between MTN and FUFA where FUFA had granted it the right to feature images of national team players in its advertising and promotional activities.
"Uganda Cranes Soccer Team during a match" (Image courtesy of FUFA) Source
What issues were before the court for determination?
The court determined the following issues;
- Whether the plaintiff owned the player’s/model’s image rights in issue?
- Whether the defendants were in breach of any contract?
- Whether the plaintiff was entitled to payment for continued use of its model’s images for the period of three years in line with the contract dated 7th September, 2007?
- Whether the parties were entitled to the remedies sought?
What was the decision of the court?
The court held that;
- Image rights are rights that individuals have in their personality, which enable them to control the exploitation of their name or picture. These personality rights consist of two types ie the right to privacy that keeps one’s image and likeness from exploitation without permission or compensation; and the right to publicity which is an exclusive right of an individual to market his or her image, likeliness, or persona for financial gain. The right to one’s own image is the ability to decide when, how and by whom one’s physically recognisable features (image, voice and name) can be captured, reproduced or published.
- A player’s image can include anything about that player such as the player’s name, nicknames, likeness, image, photograph, signature, autograph, initials, statements, endorsement, physical details, voice and other personal characteristics unique to the player. Everything related to the image of a sportsperson could be considered a matter of image rights.
- In soccer, the term “image rights” refers to proprietary rights of a player’s personality, and the right to control, licence, 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.
- The image has two characteristics as: a personal right and a property right. It is common sense that 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. The possibility to license image rights rests in the property aspect of this institute.
- Image rights deals enable the parties to exploit that likeness for commercial value, i.e. through sponsorship and endorsement activities. There are three main ways that a soccer player can seek to commercialise his or her rights in the following ways;
a) Sponsorship. Here a corporate brand pays the player (or provides the player with products) in exchange for being granted certain marketing rights by the player, in order to promote the brand’s image generally. The marketing rights might take the form of participation in advertising, or wearing branded clothing, for instance.
b) Endorsement. It involves the personal recommendation by the player, of products made by the sponsoring brand, or at least a close association between the player and those products.
c) Merchandising. This operates by monetising the player’s own image rights and status, by applying it to the player’s “personal” range of products. Generally it requires considerable investment of resource into protecting and growing the player’s own image and “brand,” including investment in a trademark portfolio.
- Images can be exploited collectively or individually. Collectively as part of the football team, the player could have their image exploited through sports events, championships and matches, by the broadcasters and the club. On the other hand, the player could have their image exploited through specific commercial projects off the field of play, by sponsors, third parties, and also the club. The player needs to define the limits and conditions, distinguishing uses from commercial deals. It is a non-exhaustive list of possibilities that can be negotiated as the parties see fit.
- In the beginning of a soccer player’s career, the image rights are owned by the player himself, i.e. the player’s image rights cannot be exploited by anyone without the player’s consent. Once the player acquires an image that has a value to sponsors, there will likely be an employment contract and image rights agreement negotiation. If the player’s image has independent commercial value (or the prospect of such), then the player will often seek to transact in it. The negotiation usually will rotate around the extent to which the club may use the representation of the player and/or use of the player’s image rights in connection with or combination with any of the name, colours, crest, strip, logos identifying him as a player for his club. Consent does not need to be in writing, but it must be unequivocal.
- The image of the sportsperson associated with the distinctive signs of the club or team is said to be collective image when the number of athletes whose image is reproduced exceeds a certain threshold (usually a minimum of three to five players is required), which is often defined by a collective agreement. In such case, this type of image normally belongs to the employer, who then decides whether to use the collective associated image on any medium or by any means, for its own benefit or that of its partners. The collective image can be exploited off the field of play, by sponsors, third parties, and also the club, or by the national association where the player is an international footballer and has further image rights agreements with his national football association.
- The Club or national association owns the exclusive rights to its name, emblems and uniform, which the player wears as a player for the Club or national team. The powerful connection between a sports team and its supporters is hinged upon these image rights, which extend to the team’s name, colours, mascots, and even the collective image of its players.
- The use of the player’s image rights in a collective context by the club or national association is currently a matter covered by the employment contract. The contract governs any representation of the player and/or the player’s image in connection or combination with the name, colours, trademarks, logos or other identifying characteristics of the Club or national association, or in any manner referring to or taking advantage of any of the same.
- Under such a contract, the player ordinarily grants to the Club the right to: photograph the player both individually and as a member of a squad and use his image as part of the team’s collective image. The use of the player’s photograph and/or player’s image either alone or with not more than two other players at the Club is limited to no greater usage than the average for all players regularly in the Club’s first team, and the Player’s photograph and/or player’s image is not be used to imply any brand or product endorsement by the Player.
- Still under such a contract, the players assign the collective aspect of their image rights, reserving those of an individual nature for themselves. The assignment of image rights is almost complete and the Clubs exploit most aspects of the image rights of their players. By doing so, the Clubs try to offset the high signing bonuses of their players, receiving in exchange any remuneration that they generate, directly or indirectly, through the commercialisation of their individual and collective images.
- The player usually agrees (under the contract) that the Club will be entitled to use, in a reasonable manner and so as not to bring the player into disrepute, the name, the nickname, signature image, voice, film portrayal and other characteristics of the player in connection with manufacture, selling, distribution, licensing and promotion of items of official Club merchandise relating to the Club and its player.
- Football Clubs usually include a clause restraining the player at any time during the term of the contract, when on international duty in relation to the players’ national football association (FUFA), the continental football association (CAF) or the international football association (FIFA), from doing anything to promote endorse or provide promotional marketing or advertising services or exploit the player’s image either in relation to any person in respect of such person’s products brand or services which conflict or compete with any of the Club’s branded or football related products or any products, brand or services of the Club’s main sponsors/commercial partners or of the League’s principal sponsor, without the written consent of the Club.
- The use of an athlete’s image during the course of participation in a sport events of the nature for which he or she is contracted with the team as a member of their team at such an event, exploitation of their image by the club during the course of such an event is considered to be an inherent part of their labour contract.
- Except to the extent specifically provided in the club employment contract or otherwise specifically agreed with the player, a player is ordinarily not prevented from undertaking promotional activities or from exploiting the player’s image so long as those promotional activities or exploitation do not interfere or conflict with the player’s obligations under the contract, and the player gives reasonable advance notice to the Club of any intended promotional activities or exploitation.
- Image rights maybe assigned or licenced, however as earlier noted the holder of the right to one’s own image cannot license it fully.
a) Assignment of image rights. This refers to the transfer (or sale) of the right of commercial use. The assignment operates a change in property interest from the assignor to the assignee allowing the latter to legally enforce its rights should there be an infringement. The assignee acquires full and complete ownership rights and will be free to use its rights as it deems appropriate, including licensing them to others or transferring them to a third party. The assignment will generally involve a one-time payment from the assignee to the assignor.
b) Licensing. Here the licensee is authorised to perform certain acts strictly reserved to the image rights owner, over a specified period of time. The licensor retains some level of control over the image rights by remaining the rights owner. Types of licences include exclusive, non-exclusive and sole licence.
- 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. Expressly agreeing that the counter-party is allowed to reproduce, publish, capture, and monetise their image in a specific scope of use. This contract needs to be very clear and concise and will contain clauses corresponding to the duration, the fees and the terms of payment, scope of the image exploitation, the obligations of both parties, the IP rights and trademarks protection, the termination conditions, jurisdiction and governing law chosen by the parties, and any other items agreed by the parties.
- Images of athletes can be used and exploited by a whole range of natural and legal person, either directly or indirectly: the athlete himself, the sports agents, clubs, teams, sports companies and associations, sports federations, image rights companies, sports event organisers, sports equipment manufacturers, manufacturer of goods and provider of services, film producers, advertising or public relations entities etc.
- Image rights are governed by the principle of freedom of contract. The primary mechanism through which image rights are used commercially is through a licensing agreement. Image licensing agreements involve the commercial exploitation of a player’s image, such as the use of the player’s name, photograph, reputation, voice, signature, initials or nickname. Sports players may also exploit other commercial opportunities related to their image rights such as celebrity endorsements and appearance fees.
- If the club wants to use the image of one of its players across a range of sponsorship opportunities, then it becomes pretty vital for the club to contract separately with the player through an image rights deal to have control of those rights to endorse particular products and services, and if the player owns his image through a company, the club will need to contract with that company. Under an image rights agreement, a player will license the rights to their “image” to their club who, in addition to paying the player a wage, will pay royalties for the use of the player’s image. It should also be noted that clubs traditionally pay their players solely for playing football so in the absence of a separate image rights agreement with their star players it would be difficult for clubs to use their players’ image with the club’s commercial partners because that is not generally permitted under a player’s standard employment contract.
- 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.
- 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, upon accepting a call to the national team. The consent that can be implied is when pictures are taken during a football match for public information, even though it is debatable that by playing the match on an open stage a player would have implicitly agreed to the use of their image for commercial purposes.
- An exclusive license when granted allows the person the same rights as that of the owner of the image right. This includes suing third parties who may infringe on these rights. On the other hand, a person holding a non-exclusive license is not entitled to complain about any alleged infringement of the rights so licensed.
- Much as there could be a conflict between copyright (of the photographer) and image rights (of the models/persons appearing in those photos), copyright cannot prevail over image rights when there is doubt that the person’s consent has been granted for such use.
- When assessing damages as a result of infringement on a sports person’s image rights, the Court will identify and predict future revenue streams from commercialising their image and discount them into the present applying certain risk factors, including injury and early retirement. These are based on the abilities and expected performances of the sports persons concerned. Such evaluations are made on a case-by-case basis according to the particular facts and circumstances of each individual, taking into account: the player’s performance on the pitch will have a value whilst a separate discussion regarding his image rights may factor in an analysis of how much income they can expect to generate for paying the player for those rights, and any fall from grace of the sports person.
- Proline had the licence to ensure the commercial use of the player’s images which means they could permit MTN to use these images for its advertising. However, MTN infringed on these image rights when it continued exploiting them upon the expiry of the contract. FUFA on the other side could not permit MTN to use these same images since Proline had the exclusive licence in that regard.
- The case against the 2nd defendant (Saathi & Saathi) was dismissed because the 2nd defendant was only an agent of the 1st defendant (MTN) under the contract and could not be held liable for the any infringement by the 1st defendant after the expiry of the contract.
What is the relevance and key takeaways from this judgement?
This judgement is relevant and has the following key takeaways;
- Uganda has no specific statute intended to protect people’s image rights. This judgement therefore provides assurance of protection of people’s image rights from those who would want to use them for commercial or publicity purposes without first obtaining consent.
- Before a photographer takes a photograph of someone, that person needs to consent to the same. However, this same consent doesn’t entitle the photographer to use this photograph for commercial purposes. It’s very important that before the photographer can use this photograph for commercial or publicity purposes, the person appearing in the photograph gives un-equivocal consent (preferably written) which allows the photographer to exploit their image rights. A mere disclaimer usually used by event’s organisers such as “By participating in this event, you consent to our use of your images taken during this event”, is not enough.
- Sports clubs may need to revisit their contracts with their players to have clear clauses as to what extent of the image rights of the teams have regarding photographs taken during games, trainings, team photoshoots, among others. The same clubs need to understand the available limitations regarding the use of images of their players either to advertise the team’s merchandise or even services of its sponsors.
- Athletes need to understand the relevance of signing licencing agreements with any one that intends to exploit their images for commercial purposes and most importantly ensure that these agreements are up to the required standard to the extent that they aren’t exploited by the other party beyond the agreed extent. It goes without saying that for some reasons, many athletes tend to shy away from seeking the counsel from lawyers before they sign agreements and this has proved to always come with serious repercussions.
- An athlete’s benefit from his/her image rights depends on the kind of brand they possess. This is why upon infringement of their image rights, courts will also look into the same line. Therefore, as athletes seek to benefit from their image rights, it’s important that they build a brand, know their value and the expected earnings from any such exploitation.
- Before using images of athletes for advertising purposes, sponsors among others need to ascertain whether the person, body or entity that has allowed them to use these images actually have the right to provide such consent. Do they possess the image rights? , if not, are they licenced and what is entailed in their licence?
Conclusion
In addition to the enactment of the National Sports Act, 2023, the sports industry seems to be heading towards the right direction and with certainly a steady progress. There’s however serious need for awareness among the sports persons which could be a way to guide any intended improvements that could guide the industry to steady progress. The payment within the sports industry is also worrying, perhaps athletes need to take serious exploring the option of commercially benefiting from their image rights.
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