Boing Boing 

Fictional products don't violate trademark laws


The makers of Clean Slate, a drive-wiping program, sued Warner over a fictional product with the same name in The Dark Knight Rises; the judge quite sensibly told them that trademark protects you from unfair competition -- it doesn't let you own words.

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Yet another Ikea fan-site threatened by the company


It's not just Ikeahackers: Ikea has gone all-out war on its web-fans.

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King no longer claims to own "candy," still claims it owns "saga"

King Games, makers of Candy Crush, have backed down from their insane campaign to trademark the use of "Candy" in connection with games, a gambit that brought them ridicule and opprobrium (for example, a game jam where all the games made use of "candy"), not least because the company bullied competitors who had created candy-themed games years before Candy Crush came to market. However, the company still asserts a trademark over the use of the word "saga" in connection with games, and is trying to shut down The Banner Saga.

Candy Quest: a text-adventure in defiance of the stupid Candy Crush trademark

Inspired by the news that King.com -- creators of the game "Candy Crush" -- had received a trademark on the use of the words "candy" and "saga" in connection with video games (and other things) and were using it to censor its competition, Michael Brough's created a fun -- and trenchant -- text-adventure called Candy Quest 3: Edge of Sweetness. It's part of The Candy Jam, an indie game-jam created entirely to troll the butthead corporate overlords at King.com.

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BSA to Hacker Scouts: change your name or be sued


The Hacker Scouts is an organization "that focuses on STEAM (science, technology, engineering, art, and math) education, skill building and community engagement with the aspiration to help our children develop skills in the areas they are truly interested in, abilities that would allow them to dream big and create big." They filed for a trademark on the name "Hacker Scouts" and got a legal threat from lawyers for the Boy Scouts of America. After a protracted back-and-forth by mail, the Hacker Scouts have gone public, because the BSA won't soften its position: call yourselves the ____________ Scouts, and we'll sue.

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Independent Brewers United says they own sixes and nines


Magic Hat IP, LLC and Independent Brewers United Corporation filed a remarkably spurious trademark lawsuit against West Sixth Brewery in Lexington, KY. Ben sez:

The suit alleges that West Sixth's own logo, which is a "6" within a circle, infringes upon its trademarked "#9" mark and is "directing Defendant West Sixth to account for and to pay over to Magic Hat all profits realized by West Sixth as a result of its use of the 6 Marks, its infringement of MagicHat's trademarks and trade dress, and its acts of unfair competition" as part of the awards it seeks from this suit.

Magic Hat is owned by North American Breweries, a large, multinational corporation that produces and imports several different brands of beer. West Sixth, on the other hand, is a local startup started about a year ago that strives to give back to its own community through financial donations, environmental stewardship, and community activities, many of which are free for attendees.

Brewer Magic Hat files federal lawsuit against West Sixth Brewing

Games Workshop trademark bullying goes thermonuclear: now they say you can't use "space marine" in science fiction

For years, there have been stories about Games Workshop being trademark bullies and sending threats to people who use the term "space marine" in connection with games. But now that they've started publishing ebooks, Games Workshop has begun to assert a trademark on the generic, widely used, very old term "space marine" in connection with science fiction literature.

MCA Hogarth, an author who has published several novels in ebook form, has had her book "Spots the Space Marine" taken down on Amazon in response to a legal threat from Games Workshop. She could conceivably fight the trademark claim, but that would cost (a lot) of money, which she doesn't have.

I used to own a registered trademark. I understand the legal obligations of trademark holders to protect their IP. A Games Workshop trademark of the term “Adeptus Astartes” is completely understandable. But they’ve chosen instead to co-opt the legacy of science fiction writers who laid the groundwork for their success. Even more than I want to save Spots the Space Marine, I want someone to save all space marines for the genre I grew up reading. I want there to be a world where Heinlein and E.E. Smith’s space marines can live alongside mine and everyone else’s, and no one has the hubris to think that they can own a fundamental genre trope and deny it to everyone else.

At this point I’m not sure what course to take. I interviewed five lawyers and all of them were willing to take the case, but barring the arrival of a lawyer willing to work pro bono, the costs of beginning legal action start at $2000 and climb into the five-figure realm when it becomes a formal lawsuit. Many of you don’t know me, so you don’t know that I write a business column/web comic for artists; wearing my business hat, it’s hard to countenance putting so much time and energy into saving a novel that hasn’t earned enough to justify it. But this isn’t just about Spots. It’s about science fiction’s loss of one of its foundational tropes.

I have very little free time and very little money. But if enough people show up to this fight, I’ll give what I can to serve that trust. And if the response doesn’t equal the level of support I would need, then I still thank you for your help and your well wishes. For now, step one is to talk about this. Pass it on to your favorite news source. Tell your favorite authors or writers’ organizations. To move forward, we need interest. Let’s generate some interest.

A few important notes:

* Amazon didn't have to honor the takedown notice. Takedown notices are a copyright thing, a creature of the Digital Millennium Copyright Act. They don't apply to trademark claims. This is Amazon taking voluntary steps that are in no way required in law.

* Games Workshop's strategy is to make "space marine" less generic by launching high profile, bullying attacks on everyone who uses it, so that there will come a day when people hearing the phrase immediately conclude that it must be related to Games Workshop, because everyone know what colossal dicks they are whenever anyone else uses the phrase

* Trademarks only apply to commercial works. You can and should use "space marine" in your everyday speech, fanfic, tweets and so on. For one thing, it will undermine Games Workshop's attempts to homestead our common language.

In the Future, All Space Marines Will Be Warhammer 40K Space Marines (Thanks to everyone who sent this in)

Jack Daniel's has a very nice trademark lawyer


Patrick Wensink has posted a very nice and friendly cease-and-desist letter from Christy Susman, a Jack Daniel's company's trademark lawyer, who were concerned about the cover on his book Broken Piano for President. The JD lawyers offered to help pay for a new print run.

The Whiskey Rebellion. (Thanks, Leah!)

Black-light acrobats Fighting Gravity send trademark threat over unrelated fantasy novel called "Fighting Gravity"

That Neil Guy sez, "Writer Leah Petersen received a Cease and Desist notice. Seems the title of her debut novel, Fighting Gravity, is also the name of a live performance group that appeared on America's Got Talent. As Leah writes on her blog, the claim is that 'the title of my science fiction novel about a couple of teenage guys in a romantic relationship is an infringement on the trademark for their black-light, gravity-defying illusion performance group.' Now she gets to pay for a lawyer. Lucky her."

Update: And it's off: "Fighting Gravity To Leah Peterson and her fans: Disregard the cease and desist letter that was issued by our lawyers. Although imitation is the sincerest form of flattery, some people have taken that too far and we have had to deal with it. By no means is Leah Peterson one of those people, our lawyers were just doing their jobs and trying to protect our name and trademark. We wish the best for Leah and hope her book becomes a great success! "

Chick-Fil-A threatens guy who made "Eat More Kale" shirts; he fights back with a Kickstarter documentary

Bo sells a t-shirt that says "Eat More Kale" from his home in rural Vermont. Titanic chicken sandwich chain Chick-Fil-A claims that this shirt infringes on their trademark for the slogan "Eat Mor (sic) Chikin' (sic)." They've demanded that Bo shut down and turn over his website to them. Rather than capitulate, Bo is making a defiant documentary about his refusal, and he's raising funds on Kickstarter.

Of course, I might not win --- the odds are against me. All over the country 'trademark bullies,' large corporations that bully small businesses over alleged claims of trademark infringement, are legally harassing small businesses and wearing them down with repeated lawsuits and appeals. In the face of overwhelming legal bills, most small businesses just give up.

This is more than just plain wrong: it's un-American.

By helping make this documentary I want to shine a light on this issue, my battle, and other trademark bullies, too. If I win, it's a great story; if I lose, it's a sad story. Either way, Jim and I think it's a story worth telling.

It seems to me that there shouldn't be any valid trademark claim here. Leaving aside the spelling issue, the graphic presentation of "Eat More Kale" is very different from "Eat mor chikin." The phrase "Eat more," is pretty generic, and is unlikely to result in confusion. I'm not a lawyer, but I'm inclined to think that if Bo can stay in the fight long enough -- that is, if they don't outspend him into oblivion -- he stands a chance of winning.

A Defiant Dude by James Lantz and Eat More Kale guy — Kickstarter

Stephen Fry and Ian McKellen pay to save The Hobbit pub from trademark trolls

You've probably heard that an old pub called The Hobbit in Southampton is under threat from the film company that controls the licensing for the Tolkien canon. After a public outcry, the company agreed to sell the pub a license to go on using the name it has had for decades. Stephen Fry and Ian McKellan -- who are both in the Hobbit movie (Fry is in NZ right now, shooting) -- decided that this was stupid, so they've paid the license fee themselves.

She said: "I had a telephone call on Saturday evening, while we were trading, from Stephen Fry's business partner and manager. That's when he told me.

"I was very shocked.

"They've said as soon as they finish filming they would like to come down and visit the pub."

...Sir Ian, who plays Gandalf in the Lord Of The Rings films, described the film company's actions as "unnecessary pettiness" and Fry said it was "self-defeating bullying".

Hobbit pub copyright row: Stephen Fry and Ian McKellen to pay licence (via Techdirt)

Update: Simon Phipps writes, "The Hobbit is one of my locals, and I thought you'd like some background. I wrote about the case here. While the pub has existed for a long time, The Hobbit started opportunistically abusing their movie-related paraphernalia a while back and has been trading on it for years without seeking permission - presumably because someone there knew they'd never get it. They could have commissioned their own artwork but they didn't. Far from it being a case of a bully acting improperly, I think actually Zaentz acted uncharacteristically well here. This wasn't about the pub calling itself 'The Hobbit' primarily, it was about ripping off movie stills and using them for advertising. They challenged that abuse and then offered an amazingly easy settlement. Meanwhile, instead of any sign of a mea culpa, some people have been wildly slandering Zaentz. Given how much the law sucks and is being weaponised, I think we should be encouraging previously abusive companies like Zaentz to act this generously in future."

Oil company changes its name to "Pixar"

A Canadian oil company called Paramount Resources has changed its name to Pixar. Seriously.

Previously known as Paramount Resources, I guess the executives got tired of being named after one of Hollywood’s has-been brands. As far as I can tell, this is not a joke, there’s even a serious sounding press release composed without a hint of irony. It’s being reported in the wider media as well.

Oil Company renames itself Pixar (Thanks, John!)

Minecraft creator challenges trademark belligerents to winner-take-all Quake deathmatch

Notch, the game developer who struck gold with his multimillion-dollar bestselling low-rez indiegame Minecraft, has a novel proposal for resolving the stupid trademark threats he's been receiving from Bethesda games, who are upset that he's working on a game called "Scrolls" (Bethesda makes a game called "Elder Scrolls"). Rather than giving a whack of dough to lawyers to settle this, Notch has challenged Bethesda's devs to a three-on-three Quake 3 blood match, top fragger take all.
I challenge Bethesda to a game of Quake 3. Three of our best warriors against three of your best warriors. We select one level, you select the other, we randomize the order. 20 minute matches, highest total frag count per team across both levels wins.

If we win, you drop the lawsuit.

If you win, we will change the name of Scrolls to something you’re fine with.

Regardless of the outcome, we could still have a small text somewhere saying our game is not related to your game series in any way, if you wish.

I am serious, by the way.

Hey, Bethesda! Let’s settle this! (Thanks Fipi Lele!)

(Image: QuakeLive.jpg, Wikimedia Commons/Timothee Besset)

TOM THE DANCING BUG: Who Captured Seal Team Six After Their Mission?!

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China's shonky Disneyland-a-like park closed


A Disneyland look-a-like theme park outside of Beijing called Shijingshan has been shut down by Chinese authorities, apparently as a consequence of the deal to open a Disneyland Shanghai park. Shijingshan sported some intensely crappy rides and attractions that seemed to have been designed by making wild guesses about the equivalent rides in the actual Disney parks (amusingly, the "American Adventure" ride was a haunted house).

Shijingshan management claim that they aren't copying Disney, merely taking their inspiration from the same sources. It's an interesting example of the difference between copyright and trademark; from the particulars I can see online, I don't think there's much merit to a copyright claim here -- though there are a few examples where there are clear derivative works, most of the design is merely generically derived from public domain sources such as castles and fairy tale characters. On the other had, there's a very strong trademark case here, since the use of distinctive ride-names and such seem deliberately chosen to confuse customers about the nature and origin of the park's designs.

Deputy general manager, Yin Zhiqiang, said: "The characters in our park just look a little bit similar to theirs. But the faces, clothes, sizes and appearances are different."

"We do not have any agreements with Disney."

Despite the striking similarities to foreign characters, Yin insisted the Beijing park's are all locally designed.

"Take our Cinderella as an example. The face of Disney's Cinderella face is European, but ours is a Chinese. She looks like a young Chinese country girl," he said.

Fake Disney Theme Park in China forced to Close (The Disney Blog)

'Fake' Disney park faces closure (Metro.co.uk)

(Image: DSCF6882, a Creative Commons Attribution (2.0) image from maxview's photostream)

Help plucky UK environmentalists defend themselves from ginormous US corporate bully

Jim from the Open Rights Group sez, "We are asking people to donate a few quid or dollars to help http://eco-labs.org, a small artist environmental NGO, defend their use of their domain from a spurious claim from http://www.ecolab.com the multi-billion dollar cleaning business. These plucky Brits are willing do defend their use, which is not confusing and was used prior to the registration of the UK trademark, but need about £800 ($1300) to defend themselves at .org - please help!"

Ad agency to radicals: "We own radical media(TM)"

Jim from the Open Rights Group sez, "Activists in the UK organising a 'Radical media conference' have been told by ad agency @radicalmedia that they cannot organise a 'radical media' conference. The agency claims trademark infringement. As the activists say, 'We Make Radical Media, You Make Adverts'."

Trademark thought experiment: when should intermediaries be cops? (Barista vs. Barbie)


A little trademark thought-experiment: under a proposed UN treaty, Internet Service Providers (as well as search engines, social media sites, online auctions, online games, and sites like Etsy and Thingiverse) will be responsible for detecting and interdicting trademark infringement and helping punish infringers by retaining and providing their personal information on demand from a trademark holder, without a court order.

Now, many coffee shops today are ISPs (that is, one of the kinds of intermediary targetted by this proposal). And many coffee shops today are the locus of trademark infringement -- say, when you walk in with your kid clutching a fake Barbie from a stalls market or a blanket in Santee Alley or on Broadway. If you applied this intermediary liability standard to the real world, every barista would have to be on the lookout for this kind of trademark infringement. If someone in the shop were to say, "Hey, I work for Mattel, and that Barbie's a fake!" it would be the barista's duty to leap over the counter and take away the fake Barbie.

But her responsibility wouldn't stop there: her employer would have to set up cameras and cash-register logs so that they could identify infringers later. So after you left with your kid (who is by now in tears, screaming for her lost Barbie) (or "Barbie") the barista would have to pull your name off your credit card receipt and hand it over to the random dude who says he works for Mattel, without seeing any ID (much less a court order). And she'd have to print out the photos and turn them over too.

Or she could refuse -- but if she's wrong and the Mattel guy is right, well, her boss will be on the hook for the trademark infringement, too. The barista had better be some trademark expert if she plans on refusing the request.

Many institutions are "intermediaries" for bad acts: kids ride the subway to parties where they drink before they're legally allowed to; is it the transit authority's job to police alcohol laws? Cruel pet owners hit their dogs with rolled up newspapers; adulterers meet in hotels; fraudsters use telephones, pens, photocopiers and envelopes. All these criminal acts are not subject to policing by intermediaries -- why should one industry's civil actions be the entire world's responsibility?

Discuss.

(Image: Abandoned Barbie, a Creative Commons Attribution (2.0) image from derekgavey's photostream)

New York Times advances weird, self-destructive trademark theory to prop up its paywall

FreeNYTimes writes, "The twitter account I set up to broadcast data from the NY Times API, @freeNYTimes, was recently suspended, ostensibly for trademark infringement. But I set up a mirror at @freeUnnamedNews, which should be good to go because it doesn't use the paper's name in the feed. Right?"

Some background: the new NYT paywall allows for unlimited free article views for people following links from Twitter. The @FreeNYTimes feed created links to all the NYT stories, which meant that you could read the whole paper gratis, simply by following the feed (presumably, you could also create an index of Twitter URLs that corresponded to all the URLs on the Times's site, a kind of codex of free backdoors to the paper).

The NYT has many options to fight this sort of thing. They could program their firewall to restrict Twitter referers, or to simply block anything from the @FreeNYTimes account. Instead, the Times lodged an utterly bogus trademark complaint with Twitter -- bogus because trademark doesn't generically give you the right to stop people using your product or company's name; rather, it stops people from doing so deceptively. The Times's position effectively was that Times readers would mistake @FreeNYTimes for a big-hearted gesture from the Times itself, operated by the Times in order to defeat the Times's paywall. This is a stupid thing to assert.

It's also damaging to journalism: there are many trademark holders, from Sarah Palin to Dow Chemical, who'd love it if the NYT could only use their name with permission. There is no trademark confusion when the Times prints Sarah Palin's name; there is also no trademark confusion with @FreeNYTimes.

So now there's @FreeUnnamedNews, and there's no trademark basis to use to stop the account. The next step from the Times may well be to object on the basis "deep linking," and that is a doctrine that is nearly as damaging to journalism as the exotic trademark theory the Times has already advanced: for if plain true facts ("this page exists at this URL") are property, then the Times had better get its checkbook out, as there are plenty of true facts in every edition of the Times whose putative owners would love to get paid rent for them -- and there are plenty of true facts whose "owners" would love to deny to journalists altogether (think, for example, of the true facts surrounding political corruption). And, of course, in order to sue, the Times (whose reporters have gone to jail to protect their sources) will have to demand that Twitter turn over the personal identity of the FreeNYTimes/FreeUnnamedNews person.

On the other hand, the Times might just add more complexity (and more brittleness, expense, and false positives and negatives) to its paywall by instructing it to inspect Twitter referers in detail and reject those coming from @FreeUnnamedNews. Over time, the paper will compile quite an enemies list in this fashion, a long catalog of people who are not allowed to refer other people to NYT stories.

Commercially, this is not good. As I wrote before, the mental state that the Times paywall strives to evoke in its reader is "Hey, I'm getting so much value from this site, I think I'll sign up as a paying customer," not "Oh, those bullies at the Times have clobbered another programmer and this is the fifteenth time this month that it mistook me for a freeloader. Screw them!"

The Times's staff have tweeted that they are glad to have traffic from users who leap the paywall -- a visitor is a visitor -- and implied that I've mis-stated the nature of their strategy. However, this trademark theory, hostile to free speech and an open society, belies their bravado. The problem with the Times's paywall isn't (just) that it won't work -- it's that it will lead an institution whose mission is free speech, transparency and due process into a war with its readers that demands that it oppose these values to hold its ground against them.

WIPO proposes punishing, extortionist-friendly trademark treaty aimed at eBay, Google, and Twitter

The fun-loving weirdos at the World Intellectual Property Organization have a new and terrible wheeze they want to unleash upon the world: a treaty that would require "intermediaries" (web-hosts, ISPs, social networking sites, auction sites, etc) to enforce trademarks on behalf of mark-holders. Under the proposal, these companies and organizations would not only have to delete material that is alleged to infringe on a trademark, they'd also have to narc out their users, supplying IP addresses and other information to the trademark holders, without a court order.

Combine this with the current vogue to copyright trolling, where scumbag lawyers send out indiscriminate shakedown letters demanding copyright "settlements," these being sums priced below what it would cost a victim to get legal advice as to whether they should cough up, and you've got the making of a fine racket for the next generation of legal fraudsters, bottom-feeders and blackmailers.

I love that this UN agency has made its mission to provide full employment for extortionists and trademark lawyers.

English : Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications : Twenty-Fifth Session (Thanks, Nick!)

Is it legal to print Settlers of Catan tiles on a 3D printer?


When a Thingiverse contributor uploaded 3D-print-ready homebrew tiles for German superboardgame Settlers of Catan, it raised a bunch of interesting legal questions. Is it illegal to make your own Settlers tiles? To download 3D files describing these tiles? To host the files? To print the files?

Now, Public Knowledge provides some legal analysis:

Let's start with copyright. Settlers of Catan is probably protected by copyright. Importantly, that protection does not cover the entirety of the game. Instead, copyright protects the design on the game tiles. This makes sense - the image on the tile (of pastures, or fields, or rocky quarries, or the like) is just a picture, and pictures are well within the scope of copyright. However, Sublime's 3D designs make no attempt to copy the images on the tiles. Copyright might also protect the shapes of the pieces, except these shapes are so generic and utilitarian (rectangles for roads, simple houses for settlements) that any protection would be extremely limited. Moreover, Sublime's pieces are generally more ornate that the official versions.

Copyright does not protect the shapes of the tiles (they are designed to fit together, and are therefore most likely "functional objects" outside of the scope of copyright). Nor does copyright protect the actual rules of Settlers of Catan. Game rules, like recipes, have a limited number of ways that they can be expressed. Copyright protects expressions, not ideas. Therefore, in order to protect the free flow of ideas, recipes and game rules are rarely protected by copyright.

PK's Michael Weinberg (author of the excellent white paper It Will Be Awesome if They Don't Screw it Up: 3D Printing, Intellectual Property, and the Fight Over the Next Great Disruptive Technology) goes on to analyze the patent and trademark implications, and concludes that it's almost certainly legal to make, host, design, download and print your own Settlers tiles.

3D Printing Settlers of Catan is Probably Not Illegal: Is This a Problem? (via Futurismic)

Sarah Palin Circle-R wants a trademark on her name

Some details on Sarah Palin's crazed attempt to register a trademark in her name; apart from making stupid errors in her application, there's the curious business that she considers "running for election" to be the same as using her name in commerce. Also, turns out Bristol Palin also wants a trademark on her name, for "motivational speaking services in the field of life choices."
On November 29, the application was rejected for two reasons. First, the examiner pointed out, the fact that your name appears in a news article or on your Facebook page is not evidence that you are "providing a website" featuring political information. Second, Palin did not sign the application.

The examiner pointed out that if a mark is the name of a particular living individual, it can't be registered unless that individual has signed or there is some other record of consent. (The examiner cited cases involving "Little Debbie," who is in fact a real person, and "Prince Charles," who arguably is too.) Because Palin hadn't signed, the application could not be granted.

It seems like signing your name is not something you would forget when your name is what you're trying to trademark, but she's a busy woman.

Sarah PalinTM Having Trouble With Registration

(Image: Sarah Palin, Queen of Pork, a Creative Commons Attribution (2.0) image from llyn_hunter's photostream)

Sony Ericsson sues Clearwire over logo

Sony Ericsson Sues Clearwire Out Of Fear That You'll Mix Up Their Logos.jpeg Metallic green swirls are in! Cellphone maker Sony Ericsson is suing Clearwire over the similarities between the two companies' logos. The trademark infringement comes down to the 'swirl' motif, color scheme and both companies' presence in the same market. Complaint [PDF via Engadget]

ACTA will force your ISP to censor your work if someone lodges an unsupported trademark claim

New revelations on ACTA, the Anti-Counterfeiting Trade Agreement (ACTA), a secretive global copyright being privately negotiated by rich countries away from the UN: ACTA will require ISPs to police trademarks the way they currently police copyright. That means that if someone accuses you of violating a trademark with a web-page, blog-post, video, tweet, etc, your ISP will be required to nuke your material without any further proof, or be found to be responsible for any trademark violations along with you. And of course, trademark violations are much harder to verify than copyright violations, since they often hinge on complex, fact-intensive components like tarnishment, dilution and genericization. Meaning that ISPs are that much more likely to simply take all complaints at face-value, leading to even more easy censorship of the Internet with nothing more than a trumped-up trademark claim.
At first glance, the leak suggests intermediaries such as ISPs and search engine portals may now be liable for trademark infringements by their account holders - unless there are clear exceptions such as the Safe Harbour provisions available under the Copyright Act regulations.

Professor Anna George, adjunct professor at Murdoch University and former DFAT negotiator on WTO TRIPS and the digital economy chapters of the US-Australia Free Trade Agreement, believed such a change would potentially be bad news for Australia's trade relations.

ACTA: ISPs could be liable for trademark infringements (Thanks, NeilM!)

Philip K. Dick's estate threatens Google

Nexus One, the new cellphone from HTC and Google, is named in homage to the the Nexus series of androids in Philip K. Dick's novel "Do Andoids Dream of Electric Sheep," filmed as "Blade Runner." Dick's estate's response? It's threatened Google. Names can't be copyrighted, so the vague legal mutterings imply a trademark fight. As there are hundreds of live trademarks for the term "Nexus" -- one filed by Google last month! -- this'll be a fun one.