A patent is a formidable thing. In the United States, it affords twenty years of nearly ironclad protection to an inventor who can prove, after considerable expenditure of time and money, that some new process for manufacturing widgets is a novel and non-obvious addition to what legal practitioners call the "prior art"—all those processes for manufacturing widgets that others have thought up in the past. Once the federal government has conferred a patent upon an inventor, competitors must have a care. A successful invention inspires imitation, but if the imitation is too close, its author may get slapped with a lawsuit. In the high-dollar world of patents, losing an infringement suit can mean facing damages of millions or even billions of dollars.1
So imitators have to be as ingenious as the inventors they seek to imitate. Patent law encourages such ingenuity by permitting a clever competitor to "design around" a patent in such a way as to create a product that is the functional equivalent of the protected idea but narrowly avoids entering the forbidden zone of infringement. Economic policy also favors design-arounds. While non-infringing copycat products may threaten patentees' revenues, they also make the marketplace more competitive and drive down the price of products—consequences that are widely considered to be socially desirable.2 It takes skill and legal acumen to come up with a successful design-around. Many have devoted their careers to brainstorming these legitimate knockoffs.
The humanities are perhaps the last place we would expect to [End Page 563] encounter this art of the barely legal approximation, but the past few years have witnessed the growing phenomenon of design-around scholarship. As copyrights grow longer and their owners become more chary of permissions, as publishers retreat from the exercise of fair use and take refuge in parsimonious word counts and rigid permissions policies, copyrights are coming to resemble closely guarded patents.3 This is a perverse development, and one that courts have historically frowned upon. In one well-known case, a copyright owner who had authored a set of simple rules for running a sweepstakes contest tried to prevent another promoter from using the same basic rules in its own contest materials. A panel of federal judges rejected this attempt to turn a copyright claim into a de facto patent: "We cannot recognize copyright as a game of chess in which the public can be checkmated."4
I. The Heirloom Fallacy: Grandmother's Necklace and Grandfather's Letter
Traditionally, courts and legislatures have resisted what might be called the patentization of copyrights. Copyrights are porous rights. While they confer a monopoly on creative expression, the doctrine of fair use and the idea/expression dichotomy—to name two venerable limitations on copyright control—permit unauthorized use of portions of that expression. As the great Judge Learned Hand wrote of Abie's Irish Rose, Anne Nichols's 1920s stage comedy about Irish-Jewish intermarriage: "her copyright did not cover everything that might be drawn from her play; its content went to some extent into the public domain."5 Courts have long recognized the leaky nature of copyrights, but the judiciary is only one aspect of the chess game that keeps copyright law true to itself. Authors, editors, and, equally importantly in the present context, publishers must exercise the fair-use privilege or watch it atrophy. More than a few publishers, intimidated by the clamor of copyright owners, have lost their nerve.
Caught between assertive copyright holders and risk-averse publishers, many academic authors have experienced total market failure—a breakdown of bargaining with the copyright owner, coupled with a denial of fair use by the publisher.6 The breakdown is total because when denial of permission to quote (market failure...