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

Why This Dispute Matters for Brand Lawyers and Contract Drafters

The Church of Jesus Christ of Latter-day Saints has filed a trademark infringement claim against the "Mormon Stories" podcast, prompting the Electronic Frontier Foundation to urge the court to dismiss the case. At its core, the dispute asks a question with broad commercial relevance: can a trademark owner prevent a third party from using a descriptive or denominative term to identify itself and its subject matter? The answer, under settled fair use doctrine, is almost certainly no. But the real lessons here are not just for religion-adjacent media. They sit squarely in the world of licensing agreements, brand protection clauses, and IP risk management for any organisation that relies on trademarked vocabulary to define a community or product category.

The Clause That Failed: Overly Broad Brand Guidelines Without a Fair Use Carve-Out

Large organisations routinely publish brand and trademark usage guidelines that govern how third parties may reference their names, marks, and associated terminology. The structural weakness in many such guidelines is the absence of an explicit fair use carve-out. When guidelines state, in effect, that no third party may use a mark in any commercial context without a licence, they invite litigation over uses that trademark law already permits as a matter of right. Nominative fair use, the doctrine that allows a party to reference a trademark solely to identify the owner or its goods, is a recognised defence in most common law jurisdictions. A tighter set of brand guidelines would acknowledge this boundary explicitly, distinguishing between unauthorised commercial endorsement on one hand and permissible descriptive or nominative reference on the other.

What Nominative Fair Use Actually Protects, and Why Organisations Ignore It

Nominative fair use applies when three conditions are broadly met: the product or organisation is not readily identifiable without using the mark; only so much of the mark is used as is necessary to identify it; and the use does not suggest sponsorship or endorsement. A podcast called "Mormon Stories" that discusses experiences within the LDS faith community is a textbook candidate for this defence. The host is not selling counterfeit goods or pretending to be an authorised representative. The name is, in plain terms, descriptive of the content. Organisations with strong brand identities sometimes pursue enforcement actions precisely because they can afford the legal fees, treating litigation as a deterrent rather than a genuine IP remedy. That strategy carries reputational and legal costs that risk-aware in-house teams increasingly push back on.

How to Draft Brand Licence Clauses That Reflect Reality

If your organisation licences its marks, or if you are a content creator negotiating a collaboration agreement that touches a third party's brand, the following drafting principles reduce exposure on both sides.

First, define the permitted use with precision. Rather than granting a broad licence to "use the mark" or prohibiting any use without consent, specify the exact formats, contexts, and purposes covered. A clause might read: "Licensee may use the Mark solely to identify Licensor as the subject matter of the Licensed Content, and not in any manner that suggests endorsement, sponsorship, or commercial affiliation."

Second, include an explicit acknowledgement of statutory and common law fair use rights. A well-drafted clause will state that nothing in the agreement limits the other party's rights under applicable trademark law, including the right to make nominative or descriptive fair use of the Mark.

Third, set out a clear enforcement escalation process. Agreements that jump straight from alleged breach to litigation, without requiring a notice period, good-faith discussion, or an independent review step, increase costs and damage relationships unnecessarily.

Finally, consider a proportionality clause in the remedies section. Injunctive relief for a podcast name that describes its subject matter in plain language is a disproportionate remedy. Capping available relief to actual proven damage in cases involving descriptive use is a negotiating position that courts are increasingly receptive to.

Practical Risk Assessment: Before You Send a Cease-and-Desist

In-house counsel and external brand lawyers should run a short internal checklist before any enforcement action involving nominative or descriptive use of a trademark. Ask whether the third party's use identifies your organisation or merely describes a subject matter that happens to share vocabulary with your mark. Ask whether any consumer confusion is realistic, and if so, of what kind. Commercial confusion over the source of goods is legally relevant; confusion about whether a critical or independent voice is formally affiliated is far more attenuated. Ask what a court will think of your enforcement posture. Judges and juries are capable of forming views about whether a powerful institution is using IP law to silence commentary or competition. The EFF's intervention in cases like this one is partly a signal that enforcement overreach attracts organised and well-resourced opposition.

How Adira Helps Organisations Draft Tighter IP Provisions

Adira's contract intelligence platform reads agreements from your side, which means it surfaces the clauses that create asymmetric exposure before you sign or enforce. In the context of trademark and IP licensing, Adira flags overly broad no-use provisions that lack fair use carve-outs, identifies remedies clauses that may be disproportionate under the governing law of the jurisdiction, and helps drafting teams align brand guidelines with the legal standards that actually apply. A sophisticated brand protection strategy is not one that prohibits every conceivable third-party reference. It is one that is precise enough to be enforceable where it matters and honest enough about its limits to survive judicial scrutiny.