Does Trademark Cover Stuff in Photos?

     EAST ST. LOUIS, Ill. (CN) - A calendar maker sued John Deere Co., seeking declaratory judgment that privately owned photos of vintage tractors do not fall within John Deere's trademark rights.
     3 Point Ink dba Heritage Iron sued Deere & Co. in Federal Court.
     3 Point Ink asks a judge to declare that its use of privately owned photos of John Deere tractors in a calendar does not infringe on Deere's trademarks.
     3 Point Ink produces a number of products under the Heritage Iron label, including a muscle tractor calendar. The calendar features pictures of historic, privately owned muscle tractors from the 1960s to the 1980s.
     "The tractors featured in the calendar are privately owned, and the owner has granted permission to Heritage Iron to use photographs of these privately owned muscle tractors," the complaint states. "The owner is identified by name and city and state of residence.
     "The annual muscle tractor calendar features multiple tractor brands and is not limited to a particular brand, such as John Deere. For example, the 2014 calendar features eleven different tractor brands."
     3 Point Ink commissioned Doug Nelson to paint an artistic rendition of a 1970s Kinze Repower, which is a 1970's John Deere tractor converted by Kinze to have a more powerful engine. Copies of the rendition sold as signs at trade shows and the Heritage Iron website featured a John Deere tractor and an International tractor.
     3 Point Ink says it received an objection by email from Suzanne Eagle, a Deere attorney, on Jan. 15.
     "In the email dated January 15, 2014, Ms. Eagle objected to 3 Point Ink's website header and products stating, '[t]he header of the website for Heritage Iron at www.heritageiron.com < http://www.heritageiron.com > includ[ing] an image of an agriculture tractor with green body, yellow wheels, yellow stripe, and yellow seat[,] [p]roducts including the 2014 Muscle Tractor calendar, the JD Kinze Repower Sign, and the Heritage Iron Mini Billboard Bank use images of tractors with green vehicle body, yellow wheels, and yellow stripe,'" the complaint states. (Brackets in complaint.)
     "In the email dated January 15, 2014, Ms. Eagle stated, '3 Point Ink's uses of Deere & Company's trademarks are unauthorized and constitute trademark infringement to which we object. We must insist that you cease such uses of Deere & Company's trademarks immediately.'"
     Counsel for 3 Point Ink responded to Eagle's allegations on Jan. 29. 3 Point Ink asked that Deere, as the basis for its allegations, identify every registered trademark the John Deere reasonably believes had been infringed; indentify the basis for which each mark was infringed; provide legal support of each allegation, including case law overcoming issues raised by first sale and artistic expression doctrines; and 3 Point Ink offered to "add a fine print notice that any photographs and/or artistic representations of John Deere products are provided with John Deere's permission."
     On March 5, after waiting for more than four weeks without a response, 3 Point Ink says, its counsel sent a letter to Eagle stating that it had not heard a response to the Jan. 29 letter and that 3 Point Ink requested confirmation that Deere no longer objected to 3 Point Ink's use of the images.
     In a good faith effort to resolve the situation, 3 Point Ink claims it voluntarily removed the picture of the John Deere tractor on its website header.
     Deere attorneys responded with a letter on March 17.
     "Defendant's letter purported that 3 Point Ink's 2014 muscle tractor calendar, Kinze Repower sign and mini billboard, and heritage iron website header infringe the
     '878 and '879 registrations, violate 15 U.S.C. §§ 1125(a) and (c), and 'related state trademark and unfair competition laws,'" the complaint states.
     "Defendant's letter dated March 17, 2014 states, 'Deere has no objection to the editorial use of Deere tractor photographs in 3 Point's Heritage Iron magazine to accurately reference the vehicles in articles concerning Deere tractors. Likewise, such use in books about tractors is not the subject of our client's objection.
     "Defendant's letter dated March 17, 2014 concludes with a request that 3 Point Ink acquiesce to defendant's demands. If 3 Point Ink does not acquiesce to defendant's demands, defendant states it 'will take any action it deems necessary to protect its valuable intellectual property rights and secure compensation for all unauthorized use to date.'"
     3 Point Ink claims its use of pictures of privately owned John Deere tractors was done in good faith and does not infringe on Deere's trademarks. 3 Point Ink also says the photographs did not dilute Deere's trademarks.
     3 Point Ink is represented by Nelson D. Nolte of Polster Lieder in St. Louis.
     Deere did not respond to Courthouse News' request for comment.