Marc Moore v. City of Sedalia etc.

United States Court of Appeals
FOR THE EIGHTH CIRCUIT
___________
No. 00-1918
___________
William S. Purdy, an individual, *
*
Plaintiff-Appellant, *
*
v. *
*
Burlington Northern Santa Fe *
Corporation, a Delaware corporation; *
Burlington Northern and Santa Fe *
Railway Company, a Delaware *
corporation; *
*
Defendants, * Appeals from the United States
* District Court for the District of
Charles Shewmake; Orest Dachniwsky, * Minnesota.
Paul Hoferer; John Does, 1-200, *
* [UNPUBLISHED]
Intervenors Defendants– *
Appellees, *
___________________________ *
*
Burlington Northern Santa Fe *
Corporation, a Delaware corporation; *
Burlington Northern and Santa Fe *
Railway Company, a Delaware *
corporation, *
*
Third Party Plaintiffs, *
*
v. *
*

-- 1 of 6 --

-2-
BNSF Corporation, a Minnesota *
corporation; BNSF Corporation, a *
North Dakota corporation, *
*
Third Party Defendants. *
__________
No. 00-2335
__________
William S. Purdy, an individual, *
*
Plaintiff-Appellant, *
*
v. *
*
Burlington Northern Santa Fe *
Corporation, a Delaware corporation; *
Burlington Northern and Santa Fe *
Railway Company, a Delaware *
corporation; *
*
Defendants-Appellees, *
*
Charles Shewmake; Orest Dachniwsky; *
Paul Hoferer; John Does, 1-200, *
*
Intervenors Defendants. *
__________________________ *
*
Burlington Northern Santa Fe *
Corporation, a Delaware corporation; *
Burlington Northern and Santa Fe *
Railway Company, a Delaware *
corporation, *
*

-- 2 of 6 --

-3-
Third Party Plaintiffs, *
*
v. *
*
BNSF Corporation, a Minnesota *
corporation; BNSF Corporation, a *
North Dakota corporation, *
*
Third Party Defendants. *
__________
No. 00-2679
__________
William S. Purdy, an individual, *
*
Plaintiff-Appellant, *
*
v. *
*
Burlington Northern Santa Fe *
Corporation, a Delaware corporation; *
Burlington Northern and Santa Fe *
Railway Company, a Delaware *
corporation; *
*
Defendants-Appellees, *
*
Charles Shewmake; Orest Dachniwsky; *
Paul Hoferer; John Does, 1-200, *
*
Intervenors-Defendants, *
_________________________ *
*
Burlington Northern Santa Fe *
Corporation, a Delaware corporation; *

-- 3 of 6 --

-4-
Burlington Northern and Santa Fe *
Railway Company, a Delaware *
corporation, *
*
Third Party Plaintiffs, *
*
v. *
*
BNSF Corporation, a Minnesota *
corporation; BNSF Corporation, a *
North Dakota corporation, *
*
Third Party Defendants. *
___________
Submitted: October 17, 2001
Filed: October 24, 2001
___________
Before McMILLIAN, FAGG, and BEAM, Circuit Judges.
___________
PER CURIAM.
William S. Purdy worked as a locomotive engineer for Burlington Northern
Railroad. In 1989, Purdy was involved in a train accident that severed the legs of a
coworker. The next year, the Railway terminated Purdy’s employment because of
insubordination. Purdy has been disabled since then because of post-traumatic stress
disorder. In 1993, Purdy started using the service mark, “BNSF,” an abbreviation for
“Bringing Now Safety First,” to promote railroad safety, and established Internet
websites using the mark. He formed Minnesota and North Dakota corporations
named BNSF Corp. In 1994, Burlington Northern Railroad merged with Sante Fe
Railway and created a Delaware corporation, BNSF Corp. The combined railways
began using the abbreviation “BNSF” across the country. After the Interstate

-- 4 of 6 --

*
The Honorable Donovan W. Frank, United States District Judge for the
District of Minnesota.
-5-
Commerce Commission approved the merger in 1995, the corporation changed its
name to Burlington Northern Sante Fe Corporation and began using the logo “BNSF”
on corporate communications, advertising, promotions, and the sides of its
locomotives. In 1996, the U.S. Patent and Trademark Office granted Purdy use of
the service mark “BNSF.” In 1998, a federal court in Texas ordered the service mark
void ab initio and ordered the patent office to cancel the registration. The Fifth
Circuit affirmed. Purdy then brought this action in federal court to determine his
rights to the service mark “BNSF” under common law.
The district court * granted partial summary judgment in the Railway’s favor,
finding the Railway had made the first bona fide use of the mark. While Purdy’s use
of the mark in interstate and intrastate commerce was sporadic, de minimus, and not
directed at a relevant purchasing public, the Railway had deliberately and
continuously used the mark “BNSF” in association with the Railway’s operation in
the ordinary course of business. Besides the service mark issue, several Railway
employees had intervened to challenge Purdy’s publication of their social security
numbers and salaries on his website after the information was erroneously sent to
Purdy’s site by a Railway budgeting employee. The district court issued a temporary
restraining order enjoining Purdy from publishing the social security numbers and the
salary information if attached to the employees’ names. The court then transferred
the ownership of Purdy’s Internet domain names to the Railway and permanently
enjoined Purdy from using the “BNSF” mark in any website address or manner that
would cause confusion.
On appeal, Purdy asserts he has proper rights to use the service mark and the
injunction violates his rights to free speech under the First Amendment. Having
carefully reviewed the record, the parties’ briefs, and the applicable law, we conclude

-- 5 of 6 --

-6-
the district court properly decided the case. Because an extended opinion would
serve no useful purpose, we affirm on the basis of the district court’s orders. See 8 th
Cir. R. 47B.
A true copy.
Attest:
CLERK, U.S. COURT OF APPEALS, EIGHTH CIRCUIT.

-- 6 of 6 --