Can Tennessee bar Metro Nashville's Fair Board from using the trademark 'Tennessee State Fair' even though the Board registered it first?

Subject

Opinion No. 13-57, Tennessee State Fair and Exposition Act, July 22, 2013

Plain-English summary

The Tennessee State Fair and Exposition Act (effective May 21, 2012), codified at Tenn. Code Ann. §§ 4-57-101 to -107, created a state fair and exposition commission within the Department of Agriculture and designated it the sole body charged with administering any state fair or exposition. Section 4-57-106 provides: "The use of the name 'Tennessee State Fair' or 'Tennessee State Exposition' in Tennessee to denote a fair serving the state shall only be granted by the department of agriculture with the approval of the commission."

Before the Act, the Board of Fair Commissioners of the Metropolitan Government of Nashville and Davidson County (the "Metro Fair Board") had registered "Tennessee State Fair" as a trademark. Rep. Harold M. Love, Jr. asked whether the Act, by restricting use of the name, infringes any constitutional rights of the Metro Fair Board.

The AG concluded no. The reasoning hinges on the Hunter v. Pittsburgh doctrine, which holds that political subdivisions of a state cannot invoke federal or state constitutional protections of property rights against the state itself. Hunter v. Pittsburgh, 207 U.S. 161, 178-79 (1907) ("the state is supreme, and its legislative body, conforming its action to the state Constitution, may do as it will, unrestrained by any provision of the Constitution of the United States"). Newark v. New Jersey, 262 U.S. 192, 196 (1923): "The city cannot invoke the protection of the Fourteenth Amendment against the state."

Tennessee follows the same rule under its own constitution. Knoxville Util. Bd. v. Lenoir City Util. Bd., 943 S.W.2d 879, 883 (Tenn. Ct. App. 1996), holds that the legislature's power over property a municipality has acquired in its public capacity is "so complete" that the state may "modify or withdraw the power to hold and manage property, or take such property without compensation."

The Metro Fair Board is "merely an agent or instrumentality of the municipality." West v. Indus. Dev. Bd. of City of Nashville, 206 Tenn. 154, 157 (1960); Tenn. Elec. Power Co. v. City of Chattanooga, 172 Tenn. 505 (Tenn. 1937). Since the Metro government as a whole cannot complain of a Fourteenth Amendment taking, its agency board cannot either.

The AG acknowledged that trademarks are private property when held by private owners. Hamilton-Brown Shoe Co. v. Wolf Bros. & Co., 240 U.S. 251 (1916); Chattanooga Foundry & Pipe Works v. City of Atlanta, 203 U.S. 390 (1906); Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916); C.F. Simmons Medicine Co. v. Mansfield Drug Co., 93 Tenn. 84 (1893). For a private trademark holder, the State's restriction would implicate due process and takings concerns under U.S. Const. amend. V and XIV and Tenn. Const. art. I, § 8 and § 21. The municipal-subdivision rule blocks that argument for Metro's board.

Currency note

This opinion was issued in 2013. Subsequent statutory amendments, court decisions, or later AG opinions may have changed the analysis. Treat this page as historical context, not current legal advice. Verify current law before relying on any specific rule, deadline, or remedy mentioned here.

The Hunter v. Pittsburgh doctrine remains good law. The Tennessee State Fair Act has been amended at the margins, and the longstanding political dispute over which entity runs the state fair in Nashville has evolved (with Metro and the State Fair Commission reaching periodic operational arrangements). Anyone relying on this opinion for a current dispute should check both the current Title 4, Chapter 57 text and any state/Metro agreements affecting fair operations.

Background and statutory framework

The State Fair Act. Tenn. Code Ann. §§ 4-57-101 to -107 (effective May 21, 2012). § 4-57-104 creates a State Fair and Exposition Commission within the Department of Agriculture as the sole body charged with administering any state fair or exposition. § 4-57-105 lists its authority and powers. § 4-57-106 reserves the use of the name "Tennessee State Fair" or "Tennessee State Exposition" to entities granted authorization by the Department with Commission approval.

Trademark law sources. Tennessee Trade Mark Act of 2000, Tenn. Code Ann. §§ 47-25-501 to -518. Federal Lanham Act, 15 U.S.C. §§ 1051-1141n.

Property-rights protections (private). U.S. Const. amend. XIV ("no State [shall] deprive any person of life, liberty, or property, without due process of law"); amend. V Takings Clause (made applicable to states via the Fourteenth Amendment, Brown v. Legal Foundation of Washington, 538 U.S. 216, 232 n.6 (2003); Chicago, B & Q R. Co. v. Chicago, 166 U.S. 226, 239 (1897)). Tenn. Const. art. I, § 8 ("law of the land" provision, synonymous with federal due process, City of Knoxville v. Entm't Res., LLC, 166 S.W.3d 650, 655 (Tenn. 2005)); art. I, § 21 ("no man's particular services shall be demanded, or property taken, or applied to public use, without . . . just compensation").

Hunter v. Pittsburgh doctrine. Hunter v. Pittsburgh, 207 U.S. 161, 178-79 (1907): municipal corporations are political subdivisions of the state, created as convenient agencies. The state may modify or withdraw their powers, take their property without compensation, hold it itself or vest it in other agencies, expand or contract their territorial area, unite them, repeal their charter, or destroy them. The state is supreme. Newark v. New Jersey, 262 U.S. 192, 196 (1923).

Tennessee parallel. Knoxville Util. Bd. v. Lenoir City Util. Bd., 943 S.W.2d 879, 883 (Tenn. Ct. App. 1996), applying the same rule under Tenn. Const. art. I, § 8 and § 21.

Board as agency of municipality. West v. Indus. Dev. Bd. of City of Nashville, 206 Tenn. 154, 157 (1960) (Industrial Development Board is an agency or instrumentality of the city of Nashville). Tenn. Elec. Power Co. v. City of Chattanooga, 172 Tenn. 505 (Tenn. 1937) (Power Board is a mere agency of the city).

Common questions

My private business owns a Tennessee-registered trademark. Could the legislature take it the way it took this trademark?

The AG's reasoning doesn't transfer. Private trademark holders are protected by the Fifth Amendment Takings Clause, the Fourteenth Amendment Due Process Clause, and Tenn. Const. art. I, § 8 and § 21. State regulation that effectively destroyed a private trademark would face full constitutional review. The Metro Fair Board lost only because, as a municipal agency, it lacks standing to assert those protections against the State.

Can Metro Nashville call its annual fair something else and keep using the name "Tennessee State Fair" outside Tennessee?

The Act restricts use "in Tennessee" to entities authorized by the Department and Commission. Use outside Tennessee is outside the Act's reach. The trademark registration's enforceability outside Tennessee depends on Tennessee Trade Mark Act registration and federal Lanham Act protection, which are separate analyses.

Did the State have to pay just compensation when it restricted use of the name?

No. Under Hunter v. Pittsburgh and Knoxville Util. Bd., the State may take property held by a municipal corporation in its public capacity "without compensation." The just-compensation requirement applies to private property, not to property held by a political subdivision.

What if a private entity registered "Tennessee State Fair" instead of Metro?

The analysis would be different. A private trademark holder would be entitled to Fifth Amendment and art. I, § 21 protection. The State's restriction might still survive if structured as a regulation rather than a taking, but the constitutional review would be much more demanding.

Could Metro try a federal trademark Lanham Act claim?

The AG didn't reach federal preemption of state regulation by Lanham Act-registered marks. Metro could explore that, but the same political-subdivision standing concerns would arise under the federal claim because Metro is asserting rights against the State, its creating sovereign.

What does this mean for county fairs branded with "Tennessee" in the name?

The Act's restriction is on the specific phrase "Tennessee State Fair" or "Tennessee State Exposition" used "to denote a fair serving the state." A county fair branding itself "Knox County Fair" or "Williamson County Tennessee Fair" likely isn't covered, but anything trying to assert state-level prestige in the name would need Department and Commission approval.

Citations

Tenn. Code Ann. §§ 4-57-101 to -107 (State Fair Act); § 4-57-104; § 4-57-105; § 4-57-106. Tenn. Code Ann. §§ 47-25-501 to -518 (TN Trade Mark Act). 15 U.S.C. §§ 1051-1141n (Lanham Act). U.S. Const. amend. V, XIV. Tenn. Const. art. I, § 8, § 21. Cases: Hamilton-Brown Shoe Co. v. Wolf Bros. & Co., 240 U.S. 251 (1916); Chattanooga Foundry & Pipe Works v. City of Atlanta, 203 U.S. 390 (1906); Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916); C.F. Simmons Medicine Co. v. Mansfield Drug Co., 93 Tenn. 84, 23 S.W. 165 (1893); Brown v. Legal Foundation of Washington, 538 U.S. 216 (2003); Chicago, B & Q R. Co. v. Chicago, 166 U.S. 226 (1897); City of Knoxville v. Entm't Res., LLC, 166 S.W.3d 650 (Tenn. 2005); Hunter v. Pittsburgh, 207 U.S. 161 (1907); Newark v. New Jersey, 262 U.S. 192 (1923); Knoxville Util. Bd. v. Lenoir City Util. Bd., 943 S.W.2d 879 (Tenn. Ct. App. 1996); West v. Indus. Dev. Bd. of City of Nashville, 206 Tenn. 154 (1960); Tenn. Elec. Power Co. v. City of Chattanooga, 172 Tenn. 505 (Tenn. 1937); Metro. Gov't of Nashville and Davidson County v. Allen Family Trust, 2009 WL 837731 (Tenn. Ct. App. Mar. 27, 2009); Johnston v. Knox County, 1992 WL 79073 (Tenn. Ct. App. Apr. 21, 1992).

Source

• Landing page: https://www.tn.gov/attorneygeneral/opinions.html
• Original PDF: https://www.tn.gov/content/dam/tn/attorneygeneral/documents/ops/2013/op13-057.pdf

Original opinion text

July 22, 2013

Opinion No. 13-57

Tennessee State Fair and Exposition Act

QUESTION

Does the Tennessee State Fair and Exposition Act infringe any constitutional rights of the Board of Fair Commissioners of the Metropolitan Government of Nashville and Davidson County ("Metro Fair Board") by prohibiting the use of the name "Tennessee State Fair" without the permission of the Tennessee Department of Agriculture and the approval of the Tennessee State Fair and Exhibition Commission, assuming that the name "Tennessee State Fair" was previously registered as a trademark by the Metro Fair Board?

OPINION

No. The Tennessee State Fair and Exposition Act's regulation of the use of the name "Tennessee State Fair" does not infringe any constitutional right of the Metro Fair Board even if the name has been registered as a trademark.

ANALYSIS

The Tennessee State Fair and Exposition Act ("Act"), codified at Tenn. Code Ann. §§ 4-57-101 to -107, effective May 21, 2012, creates a state fair and exposition commission within the Tennessee Department of Agriculture to be the sole body charged with administering any state fair or exposition in Tennessee. Tenn. Code Ann. § 4-57-104. The commission is given certain authority and powers relating to fairs, expositions, and exhibitions. Tenn. Code Ann. § 4-57-105. The Act specifically provides:

The use of the name "Tennessee State Fair" or "Tennessee State Exposition" in Tennessee to denote a fair serving the state shall only be granted by the department of agriculture with the approval of the commission.

Tenn. Code Ann. § 4-57-106. According to the opinion request, the name "Tennessee State Fair" is registered as a trademark by the Metro Fair Board, and this registration was accomplished prior to the effective date of the Act.

Trademarks are a form of property. The United States Supreme Court has recognized that "[t]he right to use a trade-mark is recognized as a kind of property." Hamilton-Brown Shoe Co. v. Wolf Bros. & Co., 240 U.S. 251, 259 (1916). Courts have repeatedly recognized trademarks as property. See Chattanooga Foundry & Pipe Works v. City of Atlanta, 203 U.S. 390, 399 (1906) ("A trade-mark, or a trade-name, or a title, is property"); Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 413 (1916) ("[T]rade-marks, and the right to their exclusive use, are of course to be classified among property rights"); C.F. Simmons Medicine Co. v. Mansfield Drug Co., 93 Tenn. 84, 23 S.W. 165, 174 (1893) ("The right to acquire property in a trade-mark . . . is a common-law right, and the property so acquired is always protected by courts of equity in a proper case"). Therefore, the holding of a valid trademark implicates the protection of property rights guaranteed by the Fourteenth Amendment's Due Process Clause, which prohibits any state from depriving any person of "life, liberty, or property, without due process of law," and the Fifth Amendment's Takings Clause, which provides that no "private property be taken for public use, without just compensation." Similarly, the Tennessee Constitution guarantees in Article I, § 8, that "no man shall be . . . deprived of his life, liberty, or property, but by the judgment of his peers or the law of the land," and in Article I, § 21, that "no man's particular services shall be demanded, or property taken, or applied to public use, without the consent of his representatives or without just compensation being made therefor."

Nevertheless, it has long been settled that a political subdivision of a state may not complain of state action on the ground that it has been deprived of its property without due process of law. The United States Supreme Court summarized this principle in Hunter v. Pittsburgh, 207 U.S. 161 (1907):

Municipal corporations are political subdivisions of the state, created as convenient agencies for exercising such of the governmental powers of the state as may be intrusted to them. For the purpose of executing these powers properly and efficiently they usually are given the power to acquire, hold, and manage personal and real property. The number, nature, and duration of the powers conferred upon these corporations and the territory over which they shall be exercised rests in the absolute discretion of the state. . . . The state, therefore, at its pleasure, may modify or withdraw all such powers, may take without compensation such property, hold it itself, or vest it in other agencies, expand or contract the territorial area, unite the whole or a part of it with another municipality, repeal the charter and destroy the corporation. All this may be done, conditionally or unconditionally, with or without the consent of the citizens, or even against their protest. In all these respects, the state is supreme, and its legislative body, conforming its action to the state Constitution, may do as it will, unrestrained by any provision of the Constitution of the United States.

Id. at 178-79. See also Newark v. New Jersey, 262 U.S. 192, 196 (1923) (holding that "[t]he city cannot invoke the protection of the Fourteenth Amendment against the state"). Similarly, a municipality has no right under Article I, § 8, or Article I, § 21, of the Tennessee Constitution to assert against the State a claim for an uncompensated taking of property. As stated in Knoxville Util. Bd. v. Lenoir City Util. Bd., 943 S.W.2d 879 (Tenn. Ct. App. 1996):

The power of the legislature over the property which a municipal corporation has acquired in its public or governmental capacity, and devoted to public or governmental uses, is so complete that a municipality in dealing with public property is subject to such restrictions and limitations as the legislature may impose. The legislature may take control of such property from the officers of the corporation and turn it over to other officers under the more direct supervision of the state. The state may, at its pleasure, modify or withdraw the power to hold and manage property, or take such property without compensation.

Id. at 883 (quoting 56 Am. Jur. Municipal Corporations § 120).

Although, according to the opinion request, the Metro Fair Board registered the trademark in question, a municipal board is merely an agent or instrumentality of the municipality. See West v. Indus. Dev. Bd. of City of Nashville, 206 Tenn. 154, 157 (1960) (stating that Industrial Development Board is agency or instrumentality of city of Nashville); Tenn. Elec. Power Co. v. City of Chattanooga, 172 Tenn. 505, 514 (Tenn. 1937) (stating that Power Board is a mere agency of city in construction or acquisition of power plant). Because a municipality, and also therefore necessarily an agency of that municipality, cannot invoke against the State the constitutional protections of property rights afforded to private property, the General Assembly's regulation of the use of the name "Tennessee State Fair" through the Tennessee State Fair and Exposition Act does not infringe any state or federal constitutional right of the Metro Fair Board even if the name was previously registered by the Metro Fair Board as a trademark.

ROBERT E. COOPER, JR.
Attorney General and Reporter

WILLIAM E. YOUNG
Solicitor General

GORDON W. SMITH
Associate Solicitor General

Requested by:

The Honorable Harold M. Love, Jr.
State Representative
58th Legislative District
35 Legislative Plaza
Nashville, Tennessee 37243