                      REVISED, May 8, 1998

              IN THE UNITED STATES COURT OF APPEALS

                      FOR THE FIFTH CIRCUIT

                      _____________________

                           No. 97-40950
                      _____________________


     ABRAHAM QUINTANILLA, JR., doing business
     as Selena y Los Dinos, Individually, and
     as Independent Administrator of the Estate
     of Selena Quintanilla Perez, ABRAHAM
     QUINTANILLA, III, doing business as AQIII
     Music, doing business as Five Candles Music,
     Individually, RICKY VELA, doing business
     as Lone Iguana Music, Individually, PETE
     ASTUDILLO, doing business as Peace Rock
     Music, Individually, and CHRISTOPHER G. PEREZ,

                                    Plaintiffs-Appellants,

                             versus

     TEXAS TELEVISION INCORPORATED, doing business
     as McKinnon Broadcasting Company, doing
     business as KIII-TV (“KIII”),

                                    Defendant-Appellee.

     _______________________________________________________

         Appeal from the United States District Court for
                  the Southern District of Texas
     _______________________________________________________
                          April 17, 1998

Before REAVLEY, JONES and BENAVIDES, Circuit Judges.

REAVLEY, Circuit Judge:

     This is a copyright case.   The father of the popular singer,

Selena, sued a television station for infringement of his rights

in a videotape of a concert that was made by the station.    The

district court granted summary judgment for the defendant
television station.   Because the proof will not support

plaintiffs’ claim to sole ownership of the videotape, we affirm.

                            BACKGROUND

     Appellant Abraham Quintanilla, Jr. (Quintanilla) is the

father of Selena Quintanilla Perez (Selena).    Selena led a Tejano

band named Selena y Los Dinos (the band).    Quintanilla was the

manager and owner of the band.

     On February 7, 1993, the band performed a live concert at

the Memorial Coliseum in Corpus Christi.    By agreement between

Quintanilla and Jay Sanchez, a director for appellee Texas

Television, Inc. d/b/a KIII-TV (KIII), the concert was recorded

on videotape by KIII personnel.   Prior to the concert, Sanchez

sent Quintanilla a note stating: “Thank you for allowing us to

videotape the concert tomorrow night. . . .    As per our

agreement, we will use the video on the Domingo Show and other

news shows.   In turn, we will provide you with a master copy on

3/4 to use for promotional purposes.”    Later, Sanchez sent

videotapes of the concert to Quintanilla, with a note stating:

“As we agreed, enclosed please find copies of the concert for

your use.   In exchange, we will use the footage on the Domingo

Show.”

     Appellants contend that after the concert, songwriters (the

Songwriters) whose compositions had been performed at the concert

obtained copyright registrations for the songs with the United

States Copyright Office, and Quintanilla obtained a copyright

registration for the videotape.   The parties do not dispute that


                                  2
Quintanilla acted as agent for the Songwriters in entering into

the agreement with KIII.

     After Selena’s death, KIII aired portions of the videotape

on its programs, including a March 31, 1996 “Selena Special” on

the anniversary of her death.     Quintanilla and the Songwriters

brought this suit against KIII, alleging copyright infringement

and state law claims.1   Quintanilla claimed that he is the

exclusive owner of the copyright to the videotape and that KIII

received only a limited nonexclusive license to use the concert

footage on a single KIII entertainment show, The Domingo Show.

In addition to claims under the Copyright Act,2 the complaint

asserted state law claims under the court’s supplemental

jurisdiction, including claims for breach of contract,

misappropriation of name or likeness, fraud, deceptive trade

practices, and negligent misrepresentation.

     The district court granted summary judgment in favor of KIII

on the copyright claims, and dismissed the remaining state law

claims without prejudice.




     1
        Quintanilla sued individually, doing business as Selena y
Los Dinos, and as administrator of Selena’s estate. Christopher
Perez, Selena’s surviving husband and a band member, also
appeared as a plaintiff, along with Abraham Quintanilla, III
(Quintanilla’s son), Ricky Vela and Pete Astudillo, who were band
members and were identified in the complaint as Songwriters. The
appellate briefs further list band members Suzette Arriaga
(Quintanilla’s daughter) and Joe Ojeda as appellants.
     2
         17 U.S.C. §§ 101-1101.

                                   3
                             DISCUSSION

     Summary judgment is appropriate if the record discloses

“that there is no genuine issue as to any material fact and that

the moving party is entitled to a judgment as a matter of law.”3

Under modern summary judgment practice “there is no issue for

trial unless there is sufficient evidence favoring the nonmoving

party for a jury to return a verdict for that party.     If the

evidence is merely colorable, or is not significantly probative,

summary judgment may be granted.”4     We conclude that the district

court properly granted summary judgment on the federal copyright

claims.

A.   Work Made for Hire Doctrine

     Quintanilla argues that he is the exclusive owner of the

copyright in the videotape because the videotape was a work made

for hire, and KIII’s efforts in making the videotape fall within

that doctrine.    As the Supreme Court explained in Community for

Creative Non-Violence v. Reid, the Copyright Act “provides that

copyright ownership ‘vests initially in the author or authors of

the work,’” and the author is generally the party “who actually

creates the work, that is, the person who translates an idea into

a fixed, tangible expression entitled to copyright protection.”5



     3
          Fed. R. Civ. P. 56(c).
     4
        Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249-50,
106 S. Ct. 2505, 2511 (1986) (citations omitted).
     5
        490 U.S. 730, 737, 109 S. Ct. 2166, 2171 (citing 17
U.S.C. §§ 102, 201(a)).

                                   4
     The Act provides differently for works made for hire, where

“the employer or other person for whom the work was prepared is

considered the author” and owns the copyright, absent an

agreement between the parties to the contrary.6    The Act defines

two sets of circumstances in which a work is made for hire:

     A “work made for hire” is—

       (1) a work prepared by an employee within the scope
     of his or her employment; or

       (2) a work specially ordered or commissioned for use
     as . . . a part of a motion picture or other
     audiovisual work . . . if the parties expressly agree
     in a written instrument signed by them that the work
     shall be considered a work made for hire.7

     Quintanilla produced no written instrument where the parties

expressly agreed “that the work shall be considered a work made

for hire” as required by the second subsection of the definition.

Quintanilla therefore can prevail on his work for hire theory

only if the KIII personnel sent to videotape the concert were his

“employees” under the first subsection of the definition.    In

Reid, the Court held that general principles of agency law apply

when deciding whether the work in issue was prepared by an

“employee” rather than an independent contractor.8




     6
         17 U.S.C. § 201(b).
     7
         Id. § 101.
     8
         Reid, 490 U.S. at 750-51, 109 S. Ct. at 2178.

                                  5
     Looking to the factors named in Reid,9 KIII established as a

matter of law that the personnel it sent to videotape the concert

were not employees of Quintanilla.      Quintanilla’s argument mainly

centers on the right of control.       In Reid, however, the Court

made clear that “the hiring party’s right to control the manner

and means by which the product is accomplished” is just one of

numerous factors to consider, and that “the extent of control the

hiring party exercises over the details of the product is not

dispositive.”10    On this factor, the evidence is not so much in

dispute as its import.    Quintanilla offered evidence that he

selected the forum, controlled the lighting and stage setup for

the concert, and was the overall producer of the concert.      KIII

counters that it controlled the creation of the videotape.      While

Quintanilla told Sanchez where he wanted the two fixed and roving

cameras located and told members of the camera crew when certain

parts of the concert were coming up so they could get good


     9
        Under agency law, the following factors are relevant in
deciding whether the hired party is an employee versus an
independent contractor: (1) the hiring party’s right to control
the manner and means by which the product is accomplished; (2)
the skill required; (3) the source of the instrumentalities and
tools; (4) the location of the work; (5) the duration of the
relationship between the parties; (6) whether the hiring party
has the right to assign additional projects to the hired party;
(7) the extent of the hired party’s discretion over when and how
long to work; (8) the method of payment; (9) the hired party’s
role in hiring and paying assistants; (10) whether the work is
part of the regular business of the hiring party; (11) whether
the hiring party is in business; (12) the provision of employee
benefits; and (13) the tax treatment of the hired party. Id. at
751-52, 109 S. Ct. at 2178-79. No one factor is determinative.
Id. at 752, 109 S. Ct. at 2179.
     10
          Id. at 751-52, 109 S. Ct. at 2178-79.

                                   6
images, the evidence shows that KIII had ultimate control over

the creation of the videotape.    KIII sent a seven-member crew to

film the event.    It provided four cameras all linked to a “Live

Eye” truck where Sanchez worked during the concert.     Sanchez, an

experienced director, decided which of the four images streaming

into the truck simultaneously would be used.     Sanchez

communicated with the KIII cameramen by microphone and directed

them to focus on certain images or to set up certain camera

angles or shots throughout the concert.     He testified that while

Quintanilla made suggestions about camera placement, the final

decision was his.    Quintanilla had no authority over the editing

of the tapes done after the concert.      Quintanilla conceded that

“I don’t know anything about that [camera] equipment,” and that,

with reference to the camera truck, “I don’t know anything about

how those things work.”

     In short, Quintanilla had control over the concert, but did

not control the manner in which KIII taped the event.      He may

have made useful suggestions to the camera crew, about such

things as when the lighting was about to change, but Sanchez had

ultimate authority to tell the camera crew what to do.      KIII had

sole discretion to decide which of four simultaneous camera shots

to record, and how the tape would be edited.     On similar facts,

we held that a television station had not created a work for hire

in Easter Seal Soc. for Crippled Children and Adults of

Louisiana, Inc. v. Playboy Enterprises.11     In Easter Seal,

     11
          815 F.2d 323 (5th Cir. 1987).

                                  7
entertainer Ronnie Kole, acting on behalf of the Easter Seal

Society, contracted with television station WYES to videotape a

staged parade and musical jam session.   WYES recorded the live

performances on videotape, and its unit director Beyer controlled

the videotaping by supervising all unit employees, “making the

final aesthetic and technical decisions about the deployment of

six video cameras and sound equipment.”12   Although Kole told

Beyer in advance about musical arrangements “so that Beyer . . .

could position his camera operators and tape appropriate shots of

each band member,” and made suggestions about certain camera

angles,13 we held that the Society’s copyright claim failed

because WYES was an independent contractor under the Copyright

Act.14

     Considering all the factors discussed above, we agree with

the district court that KIII established as a matter of law that

the personnel it supplied to videotape the concert were not

employees of Quintanilla.

     B.     Joint Ownership

     Appellants complain that the district court erred in

rejecting their argument that their complaint alleged a claim

under a theory of joint copyright ownership, and erred in denying


     12
          Id. at 324.
     13
          Id.
     14
       Id. at 336. Our interpretation of the work for hire
doctrine under the Copyright Act was essentially adopted by the
Supreme Court in Reid. See Easter Seal, 815 F.2d at 334-36;
Reid, 490 U.S. at 739, 750-52, 109 S. Ct. at 2172, 2178-79.

                                8
Quintanilla’s motion for leave to amend to assert a joint

ownership claim.15

     Under the Copyright Act, a “joint work” is “a work prepared

by two or more authors with the intention that their

contributions be merged into inseparable or interdependent parts

of a unitary whole.”16

     We agree with the district court that appellants did not

plead a federal cause of action based on a theory of joint

copyright ownership.17       “It is widely recognized that ‘[a] co-

owner of a copyright must account to other co-owners for any

profits he earns from the licensing or use of the copyright

. . . .’”18    While Quintanilla and the Songwriters pleaded

copyright infringement, “‘the duty to account does not derive

from the copyright law’s proscription of infringement.       Rather,

it comes from ‘. . . general principles of law governing the




     15
       Of the plaintiffs, Quintanilla alone sought leave to
amend to add a joint ownership claim.
     16
          17 U.S.C. § 101.
     17
       To the extent that appellants claim a joint ownership
cause of action under state law (such as a breach of contract
claim or claim for an accounting under a theory of unjust
enrichment), they do not appeal the district court’s decision to
dismiss all the state law claims under 28 U.S.C. § 1367(c),
providing that the district court “may decline to exercise
supplemental jurisdiction over a claim . . . if . . . the
district court has dismissed all claims over which it has
original jurisdiction.”
     18
       Goodman v. Lee, 78 F.3d 1007, 1012 (5th Cir. 1996)
(quoting Oddo v. Ries, 743 F.2d 630, 633 (9th Cir. 1984)).

                                     9
rights of co-owners.’”19    “A co-owner of a copyright cannot be

liable to another co-owner for infringement of the copyright.”20

Further, the complaint throughout argued that plaintiffs’

copyright interests were exclusive, inconsistent with a theory of

joint ownership.

     We also hold that the district court did not abuse its

discretion in denying Quintanilla leave to amend to add a joint

ownership claim.    This suit was filed in February of 1997.    At a

May 8, 1997 pretrial hearing, counsel for appellants was

equivocal as to whether he was asserting a claim of joint

ownership.    Later, the court again asked counsel what his cause

of action was, to which counsel stated that it was based on sole

ownership of the copyright by Quintanilla.    Counsel also stated

that he did not want to add any new causes of action, although

the court repeatedly stated its view that the complaint did not

assert a claim based on joint ownership.    KIII filed its summary

judgment motion on May 28, after fairly extensive discovery that

included the depositions of Quintanilla, Sanchez, and KIII’s

general manager.    On June 20, plaintiffs sought leave to amend to

add a joint ownership claim as to Quintanilla, which the court

denied.    At a July hearing on the summary judgment motion, the

court noted that the complaint had not pleaded a joint ownership

cause of action, and that at the last hearing counsel for


     19
          Goodman, 78 F.3d at 1012 (quoting Oddo, 743 F.2d at
633)).
     20
          Oddo, 743 F.2d at 632-33.

                                  10
plaintiffs had stated that he did not want to add any new causes

of action.    Counsel for KIII argued that the summary judgment

motion was prepared based on the pleadings on file.

     “Whether leave to amend should be granted is entrusted to

the sound discretion of the district court, and that court’s

ruling is reversible only for an abuse of discretion.”21      In

ruling on a motion for leave to amend, the court may consider

whether granting leave to amend would impose undue prejudice on

the opposing party,22 and whether the moving party failed to take

advantage of earlier opportunities to amend.23    Given the

circumstances described above, we cannot say that the district

court abused its discretion in denying leave to amend.24

     21
          Wimm v. Jack Eckerd Corp., 3 F.3d 137, 139 (5th Cir.
1993).
     22
       Louisiana v. Litton Mortgage Co., 50 F.3d 1298, 1303 (5th
Cir. 1995).
     23
          Topalian v. Ehrman, 954 F.2d 1125, 1139 (5th Cir. 1992).
     24
       The judgment in the present case decides only
Quintanilla’s claim to sole ownership of the copyright. It does
not decide his claim to joint ownership, which may be litigated
in another case. The district court stated in its order granting
summary judgment that KIII has sole copyright ownership. That
holding is unnecessary to the order, and it was unwarranted by
this record. In Easter Seal, we recognized that both the
television station and the party who gave the musical performance
might be joint owners of the copyright to the videotape. 815
F.2d at 337. The efforts of Quintanilla in staging and directing
the concert, or the efforts of the band members in performing the
concert, might entitle him to joint authorship status.
Certainly, the performance by the band might itself be a work of
authorship that would render the videotape a work of joint
authorship, since copyright protection extends to “original works
of authorship fixed in any tangible medium,” and works of
authorship include “musical works,” “choreographic works,”
“audiovisual works” and “sound recordings.” 17 U.S.C. § 102(a).
KIII does not dispute that Quintanilla was the owner and manager

                                  11
C.   Transfer of Copyright

     Quintanilla argues that KIII’s copyright interest in the

videotape was transferred to him.    We agree with the district

court that Quintanilla never pleaded such a theory.    Further, a

transfer of copyright ownership “is not valid unless an

instrument of conveyance, or a note or memorandum of the

transfer, is in writing and signed by the owner of the rights

conveyed or such owner’s duly authorized agent.”25    Quintanilla

produced no writing mentioning KIII’s copyright interests in the

videotape or purporting to convey such interests to Quintanilla.

Even as to their oral understandings, Quintanilla and Sanchez

both testified that there was no discussion of who would own the

copyright to the videotape.


of the band. Conceivably, the band members were his employees
under the work for hire doctrine, or licensed or assigned their
copyright interests in their performance at the concert to him.
Further, Quintanilla’s own efforts in arranging the lighting,
deciding which songs would be performed and in which order,
deciding the forum, providing input on camera positions and
shots, directing the band to replay certain songs, and perhaps
other efforts might have involved sufficient creative input to
entitle him to joint authorship status in his capacity as the
director of the concert. “To qualify for copyright protection, a
work must be original to the author. Original, as the term is
used in copyright, means only that the work was independently
created by the author (as opposed to copied from other works),
and that it possesses at least some minimal degree of creativity.
To be sure, the requisite level of creativity is extremely low;
even a slight amount will suffice.” Feist Publications v. Rural
Tel. Serv. Co., 499 U.S. 340, 345, 111 S. Ct. 1282, 1287 (1991)
(citations omitted). On this record, we cannot say as a matter
of law that Quintanilla’s contributions were so minimal that he
is not entitled to joint authorship status. If, as Easter Seal
recognizes, the director of a motion picture is afforded joint
authorship status, we see no reason that the director of a
musical performance might not also be entitled to such status.
     25
          17 U.S.C. § 204(a).

                                12
D.   The Songwriters

     The Songwriters argue that they asserted a copyright

infringement claim independent of the claim that the videotape

was a work made for hire.    Perhaps the complaint asserted a claim

that KIII had exceeded its limited license to use a derivative

work of the Songwriters.     The complaint alleged that Quintanilla,

on his own behalf and on behalf of the Songwriters, negotiated an

agreement whereby KIII would have a limited nonexclusive license

to play the videotape of the concert on the Domingo Show only,

and that KIII exceeded the scope of the license.    While not using

the term “derivative work,” the complaint alleged that the

concert videotape “was based entirely on pre-existing works,”

including the Songwriters’ compositions, and that KIII infringed

on the copyrights in their compositions.

     A derivative work “is a work based upon one or more

preexisting works, such as a . . . musical arrangement . . . or

any other form in which a work may be recast, transformed, or

adapted.”26     Even if the videotape qualifies as an independent

work of authorship entitled to copyright protection, it might

also be a derivative work based in part on the underlying

copyrighted songs performed at the concert.    By analogy,

“‘although a novelist, playwright, or songwriter may write a work

with the hope or expectation that it will be used in a motion

picture, this is clearly a case of separate or independent

authorship rather than one where the basic intention behind the

     26
          17 U.S.C. § 101.

                                  13
writing of the work was for motion picture use.        In this case,

the motion picture is a derivative work within the definition of

that term . . . .’”27

     In contrast to co-owners of a joint work, who as explained

above cannot sue each other for copyright infringement, the owner

of a copyright can sometimes sue a party licensed to create a

derivative work for copyright infringement.        If a songwriter

grants a limited license restricting the use of a videotape of a

concert in which the songwriter’s copyrighted composition is

performed, breach of the license agreement might constitute

copyright infringement,28 particularly where, as alleged here,

the breach was material.29

     However, to prevail on a copyright infringement claim the

plaintiff must prove that he owned a copyright and that the

defendant impermissibly copied or otherwise infringed upon the

copyright.30   Plaintiffs offered no summary judgment proof that

the songwriters were the current owners of copyrights in the

songs that were performed at the concert.       Further, the Copyright

Act provides that “no action for infringement of the copyright in


     27
       1 PAUL GOLDSTEIN, COPYRIGHT § 4.2.1 n.18 (2d ed. 1996)
(quoting H.R. REP. NO. 94-1476, at 120 (1976).
     28
       See 1, 3 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT §
3.07[A][1] (1997) (discussing Gilliam v. American Broadcasting
Cos., 538 F.2d 14 (2d Cir. 1976)) and § 10.15[A].
     29
       GOLDSTEIN, supra n.27, at § 4.6.1; 3 NIMMER, supra n.28, at
§ 10.15[A].
     30
       DSC Communications Corp. v. DGI Techs., Inc., 81 F.3d
597, 600 (5th Cir. 1996).

                                   14
any work shall be instituted until registration of the copyright

claim has been made in accordance with this title.”31   The

Songwriters offered no summary judgment proof of copyright

registration in the underlying songs.   The only copyright

registration in the record is Quintanilla’s registration for the

copyright to the videotape.

     AFFIRMED.




     31
          17 U.S.C. § 411(a).

                                15
