The tech world's equivalent of Jarndyce and Jarndyce rolled back into a New York Court last week, with a judge refusing to grant John McAfee an injunction blocking Intel from transferring trademark rights to the name McAfee to a proposed cyber-security spin-off.
Intel bought the name "McAfee" when it bought McAfee Associates back in 2010. McAfee (the man) is seeking to get the courts to rule that the proposed name of his new venture "John McAfee Global Technologies Inc." avoids infringement with Intel Corp’s trademark rights or breaks any historic contract between himself and McAfee Associates.
The chip giant has plans to spin off a cyber-security firm called McAfee that involve selling a 51 per cent stake in the new business to a private equity firm. John McAfee sought to put a legal block on the transfer of the McAfee trademark, a request turned down by a New York federal judge on Friday.
US District Judge J. Paul Oetken ruled that McAfee the man had failed to stand up his contention that irreparable harm would occur if Intel sold off or encumbered the brand name McAfee.
Michael H. Ference of Sichenzia Ross Friedman Ference LLP, representing John McAfee, argued that McAfee had never sold Intel his personal name and that he was therefore well within his rights to use it for his new business. Similarities in names created potential confusion, a situation that was unacceptable to John McAfee not least because of his antipathy towards McAfee security software products1. Intel should give it up, the argument goes, as Team John McAfee argues it did when it began using the Intel Security brand to promote its security software products from 2014. Three years later the McAfee brand is once again a key part of Intel's business strategy.
"They can’t quit us; it’s like Brokeback Mountain," Ference said, Law 360.com reports. "Intel can’t quit John McAfee."
But "John McAfee quit them," he added.
Jedediah Wakefield of Fenwick & West counter-argued that John McAfee could not use his personal name to infringe Intel’s rights to the McAfee brand. Intel needs to safeguards its rights to use the McAfee brand as it saw fit, as well as its reputation. "We could have a serious dilution problem given the eccentric behaviour of Mr. McAfee," Wakefield claimed.
MGT Capital Investments Inc announced plans to rename itself as John McAfee Global Technologies Inc last May. Intel objected, saying it owned the name and sought confirmation in writing that John McAfee would avoid using "McAfee" in his company name or as a trademark. John McAfee refused to make any such undertaking, as previously reported, hence the latest round of litigation.
The case hinges on what was agreed when McAfee (the man) sold off interest in the cybersecurity business he founded back in 1991. He contends that the agreement contained no non-compete provisions. Nor did it prevent John McAfee from doing business under his own name. McAfee resigned from McAfee Associates LP in 1994 before selling off his remaining shares in the corporation three years later. ®
1John McAfee infamously made a YouTube video sending up his reputation for womanising, drug taking and general debauchery that culminating in him shooting up a PC running McAfee software.