Trademark Overreach and Fair Use: Drafting Lessons from the Church vs Mormon Stories Podcast Dispute

What the Mormon Stories Dispute Is Really About

The Church of Jesus Christ of Latter-day Saints has filed a trademark infringement lawsuit against John Dehlin, the host of the long-running "Mormon Stories" podcast. The Electronic Frontier Foundation has urged the court to dismiss the claim, arguing that the word "Mormon" functions descriptively and that the podcast's use constitutes classic fair use. At its core, this is a dispute about whether a religious institution can use trademark law to suppress critical or independent commentary that employs a term the public treats as a common descriptor. For contract and IP professionals, the case is a masterclass in what happens when brand-protection strategy is not properly aligned with the legal limits of trademark rights.

The Clause That Failed: Scope of Rights Without a Fair Use Carve-Out

The underlying legal problem here is not unique to religious organisations. Any institution that registers a trademark, then seeks to enforce it against descriptive or nominative third-party use, risks the same court scepticism. Where organisations typically go wrong is in their internal IP governance documents and any external brand-licensing or content-partnership agreements. These instruments often define the scope of the trademark owner's rights expansively, but they rarely acknowledge the boundaries those rights meet under statute and common law.

A well-drafted trademark policy or licensing agreement should include an explicit acknowledgement that third-party descriptive use, nominative fair use, and commentary use do not constitute infringement and will not be pursued. Leaving that language out does not expand the owner's rights; it simply exposes them to litigation costs and reputational damage when they overreach.

What a Tighter Trademark Enforcement Policy Would Have Said

Consider the difference between these two approaches. A vague enforcement clause reads: "Licensee shall not use the Mark in any manner not expressly authorised herein." A tighter clause reads: "The owner reserves the right to enforce the Mark against uses that create a likelihood of confusion as to source, sponsorship, or affiliation, but acknowledges that descriptive, nominative, and commentary uses by third parties that do not imply endorsement or official affiliation are not within the scope of this enforcement right."

The second formulation does three things simultaneously. It preserves genuine enforcement power over confusing uses. It signals to internal legal teams the appropriate threshold for sending a cease-and-desist. And it reduces the risk of a costly lawsuit that a court, and certainly an amicus filer like the EFF, will characterise as trademark bullying.

For organisations that also enter content-partnership or brand-ambassador agreements, a complementary clause should specify what happens when a partner or former partner continues to use a descriptive term after a relationship ends. That clause should be calibrated to the actual likelihood-of-confusion standard, not to a broader desire to police the narrative.

Nominative Fair Use: The Legal Standard Enforcement Clauses Must Reflect

Under the nominative fair use doctrine, a third party may use another's trademark to refer to the genuine goods or services of the owner, provided the use does not suggest sponsorship or endorsement, and only so much of the mark is used as is necessary for identification. "Mormon Stories" as a podcast name that discusses stories from within the Mormon tradition sits squarely within the territory this doctrine was designed to protect.

Enforcement strategies that ignore nominative fair use are not merely legally fragile. They generate the precise public relations outcome the trademark owner is trying to avoid: a story about suppression rather than a story about brand integrity. Contract drafters advising brand owners should build a fair use audit step into any enforcement protocol, making it a condition precedent to external legal action.

Licensing Agreements and the Post-Relationship Risk

One dimension of this type of dispute that rarely gets enough attention is the post-termination tail. When a content creator, licensee, or affiliated individual parts ways with an institution, their continued use of descriptive terminology relating to that institution's tradition, doctrine, or community is highly likely. A licensing or affiliation agreement that attempts to prohibit all such post-termination use is almost certainly unenforceable, and will invite the very litigation that smart contract drafting is meant to prevent.

The enforceable version of a post-termination clause focuses narrowly on uses that imply ongoing affiliation, official endorsement, or current sponsorship. It should include examples of prohibited use (such as claiming to be "the official podcast of" the institution) alongside explicit carve-outs for descriptive and commentary use. Precision here is not just good drafting practice; it is the difference between a clause that holds up in court and one that a judge dismisses in the first paragraph of an opinion.

How to Avoid the Same Exposure: A Practical Drafting Checklist

Organisations seeking to protect their trademarks without replicating this kind of dispute should work through the following questions before any enforcement action, and before finalising any brand-licensing or content-partnership agreement.

First, does the proposed enforcement target a use that a reasonable consumer would interpret as implying official affiliation or endorsement? If not, the likelihood-of-confusion threshold is probably not met. Second, does the agreement include an explicit acknowledgement of fair use limits, or does it purport to prohibit all third-party use of descriptive terms? If the latter, revise it. Third, does the post-termination clause distinguish between confusing uses and descriptive ones? If not, it is both over-broad and likely unenforceable. Fourth, has internal legal counsel completed a nominative fair use analysis before any external action is authorised? If that step is absent from the enforcement protocol, add it.

The Mormon Stories case is a reminder that trademark rights, however validly registered, do not operate in a legal vacuum. Contracts that treat them as absolute are contracts that will eventually generate courtroom embarrassment and, more importantly, the kind of coverage that no brand-protection strategy is designed to produce.