Purdy v. BNSF

Citation: Purdy v. BNSF Corp., 2001 U.S. App. LEXIS 22866 (8th Cir. Oct. 24, 2001).

Factual Background
Purdy was a former locomotive engineer for Burlington Northern Railroad (“BNR”). In 1989, he and a coworker were involved in a train accident that severed the coworker’s legs. BNR fired Purdy the next year because of insubordination. He had since been disabled with post-traumatic stress disorder.

In 1993, he formed two companies named BNSF Corp., an abbreviation for “Bringing Now Safety First.” He used the shortened mark BNSF to promote railroad safety, including on his websites at “bnsf.net” and “bnsf.org.” In 1994, BNR merged with Santa Fe Railway to form defendant BNSF Corp., and the merged company thereafter used the abbreviation BNSF.

Purdy obtained a federal trademark registration in 1996 for the mark BNSF. Defendant brought suit in Texas in 1998 to invalidate Purdy’s registration.

The district court granted defendant’s motion for summary judgment, and invalidated the registration because the mark had not been used in commerce prior to filing the application. The Fifth Circuit affirmed without opinion. 204 F.3d 1114 (5th Cir. 1999).

District Court Proceedings
Purdy then brought suit in Minnesota to determine his common law rights to the use of the BNSF mark. He had continued to use the BNSF mark after the cancellation of his registration, including for a website aimed at discrediting the defendant. Also at issue was his posting of [social security number]]s and salaries of then-current employees of defendant on his website.

The district court granted a temporary restraining order enjoining Purdy from posting this private information. The court later granted defendant’s motion for summary judgment that Purdy’s use of BNSF infringed defendant’s trademark rights. The court ordered the transfer of Purdy’s “bnsf” domain names to defendant and permanently enjoined Purdy from using the BNSF mark or name “in any context” including: (1) in the domain names “bnsf.org,” “bnsf.net,” or any other website, (2) as a trademark or trade name for any entity that provides or offers any goods or services relating to the railroad industry, and (3) in any other manner likely to cause confusion with defendant and/or its goods or services.

Appellate Court Proceedings
Purdy argued on appeal that he had rights to use the BNSF mark and that the injunction violated his rights to free speech under the First Amendment. The Eighth Circuit summarily affirmed the district court’s order, stating that “an extended opinion would serve no useful purpose.”

This page uses content from Finnegan’s Internet Trademark Case Summaries. This entry is available under the Creative Commons Attribution-Share Alike License 3.0 (Unported) (CC-BY-SA)..