Proline Soccer Academy Limited v MTN Uganda Limited, M s CQ Saathi & Saathi & FUFA (U) Limited (Civil Suit 317 of 2011)
Observed later treatment
No later-treatment classification is recorded for this judgment.
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Holding
Held that the plaintiff, as exclusive licensee of the image rights of eleven Uganda Cranes players under an agreement dated 4th July 2007, had standing to sue for infringement of those rights. FUFA could not validly assign the players' image rights to MTN through sponsorship agreements as it had no contractual relationship with the players and had not obtained their consent. MTN's continued use of the players' images in advertising beyond the expiry of the one-year licence on 8th September 2008 constituted infringement. Judgment entered for the plaintiff for general damages and costs; suit dismissed against the second defendant as it acted as an agent of the first defendant.
Outcome
Judgment entered for the plaintiff against the first defendant for general damages, interest and costs; suit dismissed against the second defendant with costs
Facts
The plaintiff, Pro-line Soccer Academy Limited, obtained exclusive licences from nine Uganda Cranes players on 4th July 2007 to commercially exploit their images. On 7th September 2007, the plaintiff entered a one-year contract with the second defendant (an advertising agency) to procure eleven Uganda Cranes players for photoshoots to be used exclusively by the first defendant (MTN Uganda) in its advertising. The contract expired on 8th September 2008. MTN continued using the images in its advertising beyond the expiry date, justifying this by reference to sponsorship agreements it had entered with FUFA in May 2007 and September 2010, which purported to grant MTN rights to feature Uganda Cranes players in promotional activities. The plaintiff sued for infringement of image rights and breach of contract.
Issues
- Whether the plaintiff owns the players'/models' image rights in issue.
- Whether the defendants are in breach of any contract.
- Whether the plaintiff is entitled to payment for continued use of its models' images for the period of three years in line with the contract dated 7th September 2007.
- Whether the parties are entitled to the remedies sought.
Orders
- Judgment entered for the plaintiff against the first defendant.
- General damages awarded in the sum of UGX 570,600,000.
- Interest awarded at 6% per annum from the date of filing suit (6th September 2011) until payment in full.
- Costs of the suit awarded to the plaintiff against the first defendant.
- Suit against the second defendant dismissed with costs to the second defendant.
- Third party (FUFA) found liable to indemnify the first defendant under sponsorship agreements.
Rules and key headnotes
Legislation cited (11)
- Civil Procedure Rules Order 1 rule 14(1)
- Civil Procedure Rules Order 1 rule 17
- Civil Procedure Rules Order 1 rule 18
- Limitation Act s.3(1)(a)
- Civil Procedure Act s.26(2)
- Civil Procedure Act s.27(2)
- Copyright and Neighbouring Rights Act 2006 s.4
- Trademarks Act 7 of 2010 s.4
- Constitution of the Republic of Uganda 1995 article 27
- Constitution of the Republic of Uganda 1995 article 26
- Data Protection and Privacy Act 9 of 2019
Cases cited (27)
- Proactive Sports Management Ltd v Rooney and others [2010] EWHC 1807 (QB); [2011] EWCA Civ 1444
- Asege Winnie v Opportunity Bank (U) Ltd and another (Civil Suit No. 756 of 2013)
- Jessicar Clarise Wanjiru v Davinci Aesthetics & Reconstruction Centre and two others [2017] eKLR
- Catherine Njeri Wanjiru v Machakos University [2022] KEHC 10599 (KLR)
- Shimlon Mwangi Kuria v the University of Kabianga [2023] KEHC 809 (KLR)
- Haelan Laboratories Inc v Topps Chewing Gum Inc 202 F.2d 866 (2d Cir. 1953)
- von Hannover v Germany (No. 2) (2012) 55 EHRR 15 (ECtHR Grand Chamber)
- Robyn Rihanna Fenty and others v Arcadia Group Brands Limited and another [2015] 1 WLR 329
- Creation Records Limited v News Group Newspapers [1997] EMLR 444; [1997] EWHC Ch 370
- Michael Kirk Douglas and another v Hello! Ltd (No. 3) [2005] EWCA Civ 595; [2006] QB 125
- Edmund Irvine Tidswell Ltd v Talksport Ltd [2002] 1 WLR 2355; [2002] 2 All ER 414
- Football Association Premier League Ltd v Panini UK Ltd [2004] FSR 1; [2003] EWCA Civ 995
- Njau and others v City Council of Nairobi [1976-1985] 1 EA 397
- United Lacquer Mfg Corp v Maas & Waldstein Co 111 F. Supp. 139 (D.NJ. 1953)
- Textile Productions Inc v Mead Corp 134 F.3d 1481 (Fed. Cir. 1998)
- Vaupel Textilmaschinen KG v Meccanica Euro Italia SPA 944 F.2d 870 (Fed. Cir. 1991)
- Morrow v Microsoft Corp 499 F.3d 1332 (Fed. Cir. 2007)
- Ram v Singh (1933) 5 ULR 76
- Friendship Container Manufacture Ltd v Mitchell Cotts (K) Ltd [2001] 2 EA 338
- Phenehas Agaba v Swift Freight International Ltd (Civil Suit No. 143 of 2000)
- Overseas Touring Co (Road Services) Ltd v African Produce Agency (1949) Ltd [1962] EA 190
- Yafesi Walusimbi v Attorney-General of Uganda [1959] 1 EA 223
- Gould v Johnson (1702) 2 Salk 422; 91 ER 367
- Midland Bank Trust Co Ltd v Hett Stubbs and Kemp (a firm) [1978] 3 All ER 571
- Wardley Australia Ltd v State of Western Australia (1992) 175 CLR 514
- Coffee Time Donuts Incorporated v 2197938 Ontario Inc 2022 ONCA 435
- Christelle Deliège v Ligue francophone de judo et disciplines associées ASBL and others (C-51/96 and C-191/97) [2000] ECR I-2549
Full judgment
The original judgment as reported. Read the original PDF before relying on any passage.