Intel has told a court that MGT Capital Investments has gone ahead with the announcement of the “John McAfee Privacy Phone,” even though the company that proposes to change its name to “John McAfee Global Technologies” has previously said that it did not plan to launch products and services under the McAfee mark.
The chipmaker claims it acquired the mark when it bought McAfee Inc. in 2011, and has used and promoted it for security products, services, and publications for consumers and businesses. Security expert John McAfee has stated that he did not sign away rights to his personal name.
Intel spun off last month its security business as a separate company, called McAfee, in which it now owns 49 percent of the equity, with the balance owned by investment firm TPG. The federal court had earlier refused John McAfee and MGT Capital a preliminary injunction until the resolution of the dispute on Intel’s transfer of marks and related assets containing the word McAfee as part of the spin-out.
MGT Capital, which has John McAfee as CEO and executive chairman of the board, has indicated its interest in diversifying into the security market.
It announced last month a privacy phone that will be “as hack proof as humanly possible,” with features such as a bank of switches on the back cover that will allow the user to physically disconnect the battery, the antennas for Wi-Fi, Bluetooth and geolocation, the camera and microphone, and would also not allow the phone to connect to a Stingray or any other IMSI (International Mobile Subscriber Identity) catcher device.
The phone will be available in August, MGT said. The company has referred to the phone largely as the Privacy Phone. But in a sentence lower down in the statement on its website it refers to “the John McAfee privacy phone,” which appears to have raised Intel’s concerns about the naming of the phone. John McAfee also referred to “The John McAfee Privacy Phone, by MGT,” in a tweet last month.
In a submission to the U.S. District Court for the Southern District of New York, lawyers for Intel and McAfee have also objected to MGT asking for the depositions of McAfee’s CEO, Christopher Young, and Intel’s CEO, Brian Krzanich, “even though Plaintiffs can point to no relevant, unique information that these chief executives possess.” The companies have also complained that MGT and John McAfee have not produced required documents for discovery.
The plaintiffs, MGT and John McAfee, “have produced almost no documents and are refusing to answer even the most basic interrogatories,” according to a letter to the court, asking for a conference in connection with a motion for a protective order to prevent the “harassing depositions” of the chief executives and another motion to compel MGT and John McAfee to “complete their document production and provide substantive responses to interrogatories about their name change and planned products and services.”
In June last year, Intel sent a letter to MGT warning it of legal action if it changed its name “to one that includes the MCAFEE trademark or otherwise use the MCAFEE name as a trademark.” John McAfee does not have the right to use the McAfee name for security related goods and services, Intel added.
John McAfee has said he had entered in 1991 into an agreement with McAfee Associates, a predecessor to McAfee Inc., to transfer certain assets to it in exchange for stock and a promissory note. But the entrepreneur submitted to the court that at no point in the agreement had he assigned the rights to his personal name through an assignment of trademark or otherwise, or agreed to restrict his right to do business using his own name.
A recent settlement conference between the two sides failed.