THULANI NGAZIMBI v. DISNEY ENTERPRISES INC (2025)

RECOMMENDED RULING ON INITIAL REVIEW OF PLAINTIFF'S AMENDED COMPLAINT

The plaintiff Thulani Ngazimbi, proceeding pro se, brings this action against Disney Enterprises, Inc. and Marvel Entertainment, LLC. (Doc. No. 1). The initial complaint asserted claims for trademark and copyright infringement arising out of the defendants’ alleged reproduction and use of the plaintiff's “Save Earth” hooded sweatshirt design in an episode of the television show Ironheart. (Id. at 2). The case was referred to the undersigned for an initial review pursuant to 28 U.S.C. § 1915.¹ (Doc. No. 9). On September 29, 2025, the Court issued a recommended ruling, recommending dismissal of the plaintiff's claims for trademark infringement, trademark dilution, and copyright infringement for failure to state a claim on which relief may be granted. (Doc. No. 11). The Court recommended the case be dismissed without prejudice to the plaintiff amending his complaint, and he filed an amended complaint on October 8, 2025. (Doc. No. 12). Because the plaintiff elected to amend his complaint, the district judge approved the recommended ruling absent objection. (Doc. No. 13).

In the same order, the district judge also referred the case to the undersigned for a review of the amended complaint. (Doc. Nos. 13, 14). The amended complaint asserts a single count of trademark infringement under § 32 of the Lanham Act, codified as 15 U.S.C. § 1114, against the defendants for using his “Save Earth” hooded sweatshirt (“Sweatshirt”) on the television show, Ironheart, without authorization. (Doc. No. 12 ¶ 10). For the reasons below, the undersigned recommends that the court DISMISS with leave to amend the plaintiff's amended complaint for the reasons stated below.

I. LEGAL STANDARD

Section 1915(e) of Title 28 of the United States Code provides that a court “shall dismiss the case at any time if [it] determines that ․ the action ․ (i) is frivolous or malicious; (ii) fails to state a claim upon which relief may be granted; or (iii) seeks monetary relief against a defendant who is immune from such relief.” 28 U.S.C. § 1915(e)(2)(B).

A valid complaint need not plead “detailed factual allegations,” however, it must state “enough facts to state a claim to relief that is plausible on its face.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007); see also Fed. R. Civ. P. 8(a)(2). A claim is plausible on its face where the facts pleaded “allow[ ] the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). Stated differently, the complaint needs to “disclose sufficient information to permit the defendant ‘to have a fair understanding of what the plaintiff is complaining about and to know whether there is a legal basis for recovery.’ ” Kittay v. Kornstein, 230 F.3d 531, 541 (2d Cir. 2000) (quoting Ricciuti v. New York City Transit Auth., 941 F.2d 119, 123 (2d Cir. 1991)).

When, as here, a plaintiff is proceeding pro se, a court must “construe [the] complaint liberally and interpret it to raise the strongest arguments that it suggests ․” McFadden v. Noeth, 827 Fed. App'x 20, 24 (2d Cir. 2020) (quoting Chavis v. Chappius, 618 F.3d 162, 171 (2d Cir. 2010)) (internal quotation marks omitted); see Stancuna v. New Haven Legal Assistance, 383 Fed. App'x 23, 24 (2d Cir. 2010) (“[W]e nonetheless construe the submissions of a pro se litigant liberally and interpret them so as to raise the strongest arguments that they suggest.”) (internal quotation marks omitted).

II. MERITS OF THE COMPLAINT

The plaintiff initiated this action on September 8, 2025. (Doc. No. 1). In the original complaint, the plaintiff purported to bring claims for trademark infringement and dilution, in violation of the Lanham Act, 15 U.S.C. § 1051 et seq., and a claim for copyright infringement, in violation of the Copyright Act of 1976, 17 U.S.C. § 101 et seq. The Court recommended dismissal of all three claims. First, the Court recommended dismissal of the trademark infringement claim on the ground that the plaintiff failed to allege facts to support the conclusion that consumer confusion would likely result from the defendants’ use of the Sweatshirt on Season One Episode Five of Ironheart (“Episode”). (See Doc. No. 11 at 5). Second, the Court recommended dismissal of the trademark dilution claim on the ground that the plaintiff did not properly allege facts to establish the first element: that the mark was “famous.”² (Id. at 7). Third, the Court recommended dismissal of the copyright infringement claim on the ground that the plaintiff's pending copyright registration did not satisfy the requirement that he own a valid copyright.³ (Id. at 8). Rather than object to the Court's recommended ruling, the plaintiff amended his complaint. (Doc. No. 13).

In the amended complaint, the plaintiff asserts one claim for trademark infringement, in violation of 15 U.S.C. § 1114.⁴ The plaintiff also attached several exhibits to his amended complaint, described as the following: Exhibit A, the trademark for THE RAD BLACK KIDS (Reg. No. 6,746,234), (Doc. No. 12 ¶ 9); Exhibit B, screenshots the Episode where actor Matthew Elam wore the Sweatshirt by THE RAD BLACK KIDS, (id. ¶ 11); Exhibit C, an example of the plaintiff's licensing history with major artists and productions, including Kendrick Lamar, (id. ¶ 12); Exhibit D, examples of the plaintiff's “consumer-facing materials and official sales channels,” (id. ¶ 10); Exhibit E, instances in which consumers asked if THE RAD BLACK KIDS collaborated with the defendants (id. ¶ 12); and Exhibit F, examples of third-party websites selling “counterfeit and unauthorized versions of the hoodie,” (id.).

A. Factual Background

The plaintiff is a Connecticut resident who owns the trademark, THE RAD BLACK KIDS. (Doc. No. 12 ¶ 4). He first used the brand in January 2014 and registered the trademark on May 31, 2022. (Id. at Ex. A). The plaintiff sells THE RAD BLACK KIDS clothing, including the Sweatshirt. (See id. at Ex. D). The plaintiff displays THE RAD BLACK KIDS brand on sites where he sells the Sweatshirt. (Id.). He has licensed his clothing with artists such as Kendrick Lamar and the creators of the television show, South Park. (Id. ¶ 12).

The defendants are Disney Enterprises, Inc. and its subsidiary, Marvel Entertainment, LLC. (Id. ¶¶ 5–6). Marvel produces the television series, Ironheart. (Id.).

On June 24, 2025, the defendants released the Episode, during which one of the characters wore a copy of the Sweatshirt. (Id. ¶ 11). The defendants never contacted the plaintiff “to ascertain the rights to use the hoodie or to seek a license.” (Id.). Nor did the plaintiff otherwise authorize the use of the Sweatshirt on the Episode. (Id.).

After the Episode aired, consumers began to directly contact the plaintiff inquiring as to whether THE RAD BLACK KIDS officially collaborated with the defendants. (Id. ¶ 12). Almost immediately after, third-party entities began selling counterfeit sweatshirts “explicitly using the show and actor's name for marketing.” (Id.).

The plaintiff seeks an injunction prohibiting the defendants from using THE RAD BLACK KIDS trademark, an accounting or disgorgement of all profits the defendants earned through their infringing acts, actual damages, damages for reputational harm through a false association with the defendants, treble damages for willful conduct, pre- and post-judgment interest, and reasonable attorneys’ fees. (Id. ¶¶ 13, Prayer for Relief).

B. Trademark Infringement

The plaintiff alleges the defendants infringed on his registered trademark, in violation of 15 U.S.C. § 1114, by using the Sweatshirt on the Episode without a license or his consent.

The Lanham Act is legislation, codified as a set of federal statutes, 15 U.S.C. §§ 1051 et seq., that protects trademarks, including through trademark registration and remedies for violations of its laws. A trademark is defined as “any word, name, symbol, or device, or any combination thereof ․ used by a person ․ to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” 15 U.S.C. § 1127. The United States Supreme Court in Jack Daniel's Properties Incorporated v. VIP Products LLC, 599 U.S. 140, 145–46 (2023), broke down this definition as follows:

The first part of that definition, identifying the kind of things covered, is broad: It encompasses words (think “Google”), graphic designs (Nike's swoosh), and so-called trade dress, the overall appearance of a product and its packaging (a Hershey's Kiss, in its silver wrapper). The second part of the definition describes every trademark's “primary” function: to identify the origin or ownership of the article to which it is affixed.

The Supreme Court made clear that the purpose of a trademark is it “tells the public who is responsible for a product.” Id. at 146 (internal citations omitted). Such a purpose benefits consumers and producers insofar as “[t]he mark quickly and easily assures a potential customer that this item—the item with this mark—is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past” and, as a result, the producer can benefit from the mark by “reap[ing] the financial rewards associated with the product's good reputation.” Id. (internal quotations marks omitted).

Where the owner of a mark believes someone is “using a mark that closely resembles his own,” he may bring a trademark infringement action under the Lanham Act. Id. at 147. Section 1114 sets forth a trademark infringement action for those whose trademarks are registered. See 15 U.S.C. § 1114(1). Under § 1114, there are two types of trademark infringement. Subsection 1114(1)(a) makes it unlawful for any person to “use in commerce” a “reproduction, counterfeit, copy, or colorable imitation” of another's registered trademark “in connection with the sale, offering for sale, distribution, or advertising of any goods or services” when that connection “is likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1114(1)(a). Subsection 1114(1)(b) does not require the trademark's “use in commerce,” but rather makes it unlawful to “reproduce, counterfeit, copy, or colorably imitate” another's registered trademark and apply it “to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce” or “in connection with” the goods’ sale or advertisement when “such use is likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1114(b).⁵

Because the allegations of the amended complaint focus on the “Defendants’ Infringing Use,” (Doc. No. 12, Part B), and there are no allegations related to the defendants’ printing or publishing a reproduction, counterfeit, copy or colorable imitation of the trademark, the Court construes the plaintiff's claim to fall under § 1114(1)(a).

To plead a trademark infringement claim (under either subsection), a plaintiff must plead two elements: “(1) that the plaintiff's mark is entitled to protection, and (2) that the defendant's use of the mark is likely to cause consumers confusion as to the origin or sponsorship of its goods or services.” Stauffer v. Trump, No. 1:24-cv-05698 (KMW), 2025 WL 1866669, at *3 (S.D.N.Y. July 2, 2025) (citing Adidas, 599 F. Supp. 3d at 158) (citation modified). Although the plaintiff's amended complaint is decidedly clearer than the initial complaint, the Court nonetheless concludes that the pleadings fail to establish either element for trademark infringement against these particular defendants.

First, the Sweatshirt itself is not a trademark, and so it is not protected by the Lanham Act. A trademark is “any word, name, symbol, or device, or any combination thereof,” 15 U.S.C. § 1127, and it can be “used” on a good, such as a sweatshirt, by placing it on the good itself or its container or display; by placing it on a tag or label affixed to the good; or, if placement is “impracticable,” then by putting the mark “on documents associated with the goods or their sale.” 15 U.S.C. § 1127. “In other words, a mark tells the public who is responsible for the product.” Jack Daniel's, 599 U.S. at 146.

As alleged, the plaintiff owns a valid, registered trademark for THE RAD BLACK KIDS, not the Sweatshirt. See Lane Cap. Mgmt., Inc. v. Lane Cap. Mgmt., Inc., 192 F.3d 337, 345 (2d Cir. 1999) (“A certificate of registration with the [United States Patent and Trademark Office] is prima facie evidence that the mark is registered and valid (i.e., protectible), that the registrant owns the mark, and that the registrant has the exclusive right to use the mark in commerce.”). This means that only the trademark, THE RAD BLACK KIDS, enjoys Lanham Act protections.⁶ For instance, if the plaintiff had alleged that THE RAD BLACK KIDS was printed on the Sweatshirt or on the Sweatshirt's label or tag, he could have alleged that the trademark was affixed to the Sweatshirt and that selling a reproduction, counterfeit, or copy of the Sweatshirt infringed on THE RAD BLACK KIDS trademark. See 15 U.S.C. § 1114(1)(a), 1127. Instead, the plaintiff merely alleged the Sweatshirt is a “flagship product and a hero piece of THE RAD BLACK KIDS collection,” is exclusively sold under THE RAD BLACK KIDS trademark, and has a “distinctive graphic” that is “intrinsically linked” to the brand. (Doc. No. 12 ¶ 10). A mere association between the Sweatshirt and THE RAD BLACK KIDS mark—without using THE RAD BLACK KIDS mark on the Sweatshirt in some manner defined by § 1127—falls short of a § 1114(1)(a) violation. In other words, the plaintiff's trademark infringement claim fails because the plaintiff does not allege that the defendants used the plaintiff's only alleged trademark, THE RAD BLACK KIDS.

Second, even if the Sweatshirt did have THE RAD BLACK KIDS mark on it, the allegations against these defendants—that they displayed the Sweatshirt on the Episode—does not fit into the type of conduct that trademark law protects. As the Supreme Court explained in Jack Daniel's, 599 U.S. at 156–57, “the Lanham Act views marks as source identifiers,” i.e. “as things that function to indicate the source of goods” and to distinguish that source from another. The “cardinal sin” under the Lanham Act is to “confuse consumers about source,” which “is most likely to arise when someone uses another's trademark as a trademark—meaning, again, as a source identifier—rather than for some other expressive function.” Id. at 157. In other words, if the mark is used in a way that does not create a likelihood of confusion about the mark's source, then such use does not infringe on the trademark.

By way of analogy, the Jack Daniel's Court presents two different scenarios to highlight why confusion about source is the “keystone,” id. at 147, to an infringing versus non-infringing use of a brand:

Suppose a filmmaker uses a Louis Vuitton suitcase to convey something about a character (he is the kind of person who wants to be seen with the product but doesn't know how to pronounce its name). Now think about a different scenario: A luggage manufacturer uses an ever-so-slightly modified LV logo to make inroads in the suitcase market. The greater likelihood of confusion inheres in the latter use, because it is the one conveying information (or misinformation) about who is responsible for a product.

Id. (internal citations omitted). The instant case falls squarely into the first analogy, i.e., the example of non-infringement. As with the first example, the defendants are alleged to have used the Sweatshirt as part of a particular character's costume, which conveyed something about that character. The allegations do not suggest the defendants purported to be the source of the Sweatshirt, which means there is no plausible likelihood of confusion about the source. As the Court indicated in the previous recommended ruling, and consistent with the Jack Daniel's analogy, “courts that have considered the appearance of consumer products in motion pictures routinely fail to find any likelihood of confusion.” Gottlieb Dev. LLC v. Paramount Pictures Corp., 590 F. Supp. 2d 625, 635 (S.D.N.Y 2008); see Sherwood 48 Assocs. v. Sony Corp. of Am., 213 F. Supp. 2d 376, 377 (S.D.N.Y.2002) (dismissing Lanham Act claims because the fact that defendants digitally inserted images of the plaintiff's buildings into a scene in a film did not indicate consumer confusion), aff'd in part, vacated in part on other grounds, 76 Fed. Appx. 389 (2d Cir. 2003); Wham–O Inc. v. Paramount Pictures Corp., 286 F. Supp. 2d 1254, 1262 (N.D. Cal. 2003) (concluding that the appearance of the plaintiff's toy in the defendant's motion picture would not lead “[c]onsumers and viewers [to] mistake plaintiff for a movie production house, and consumers and viewers [would] not mistake defendants for a purveyor of toys”).

Third, the plaintiff does not allege that these particular defendants “used” the plaintiff's mark “in commerce.” The Second Circuit has clarified that “[a] plaintiff is not required to demonstrate that a defendant made use of the mark in any particular way to satisfy the ‘use in commerce’ requirement.” Kelly-Brown v. Winfrey, 717 F.3d 295, 305 (2d Cir. 2013); see generally B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 145 (2015) (“In infringement litigation, the district court considers the full range of a mark's usages, not just those in the application.”). However, the plaintiff must still satisfy the central inquiry: “whether the trademark has been displayed to consumers in connection with a commercial transaction.” Kelly-Brown, 717 F.3d at 306. As indicated above, the allegations simply state that the defendants displayed the Sweatshirt on the Episode, not that they used THE RAD BLACK KIDS in any way connected “with the sale, offering for sale, distribution, or advertising” of the Sweatshirt or any other good.⁷ 15 U.S.C. §§ 1114(1)(a); c.f. Kelly-Brown, 717 F.3d at 306 (“The [‘use in commerce’] element is satisfied if the mark is affixed to the goods ‘in any manner.’ ”) (quoting 15 U.S.C. § 1127).

Fourth, allegations suggest that the defendants infringed on THE RAD BLACK KIDS mark because they did not obtain a license, but this characterization misapprehends trademark law for the reasons mentioned above. In this recommended ruling, the Court has provided the plaintiff with several ways a non-owner might legally use a trademark, even without the existence of a licensing agreement—for example, by refraining from using the mark “in commerce,” through “expressive use” on the Episode, or by using it in a manner that does not otherwise create a likelihood of confusion. The fact that the plaintiff has entered into licensing agreements with other non-parties involves a wholly unrelated contract, not trademark law. See Silverstar Enters., Inc. v. Aday, 537 F. Supp. 236, 239 (S.D.N.Y. 1982) (stating a breach of trademark licensing agreement “is a contract dispute and should be brought under a contract theory” and that “[s]uch a suit cannot properly be maintained as a trademark infringement action under § 1114”). Therefore, these allegations do not concern the plaintiff's trademark infringement claim.

For these reasons, the Court concludes that the plaintiff has not plausibly alleged that the defendants violated § 1114 and that this case should be DISMISSED.

C. Leave to Amend

Rule 15(a)(2) of the Federal Rules of Civil Procedure provides that “[t]he court should freely give leave [to amend] when justice so requires.” However, “[l]eave to amend, though liberally granted, may properly be denied for: undue delay, bad faith or dilatory motive on the part of the movant, repeated failure to cure deficiencies by amendments previously allowed, undue prejudice to the opposing party by virtue of allowance of the amendment, futility of amendment, etc.” Ruotolo v. City of New York, 514 F.3d 184, 191 (2d Cir. 2008) (internal quotations omitted). “[A] proposed claim is futile if, accepting the facts alleged by the party seeking amendment as true and construing them in the light most favorable to that party, it does not plausibly give rise to an entitlement to relief.” Fraser v. Caribe, No. 3:20-cv-00071 (SVN), 2022 WL 1210720, at * 3 (D. Conn. Apr. 25, 2022) (internal quotations and citation omitted).

To summarize, the plaintiff fails to plausibly plead a trademark infringement claim against these defendants for several reasons. First, as alleged, the plaintiff did not put a protected mark on the Sweatshirt, and so defendants’ use of the Sweatshirt did not infringe on his trademark or otherwise violate the Lanham Act. Second, the amended complaint fails to explain how the defendants’ use of the Sweatshirt on the Episode is likely to confuse consumers about the source. Third, the amended complaint fails to explain how the defendants used the plaintiff's THE RAD BLACK KIDS mark in commerce. Fourth, the defendants were not required to obtain a license to display the Sweatshirt on the Episode. All of these shortcomings make it highly unlikely that the plaintiff could have a viable trademark infringement action against these defendants. However, in the abundance of caution and with deference to the plaintiff's pro se status, the Court recommends giving the plaintiff another opportunity to amend the complaint, in a manner consistent with the Court's reasoning, but strongly urges the plaintiff to consider the plausibility of his claims against the defendants.

III. CONCLUSION

For the reasons stated above, the Court recommends that the court DISMISS the plaintiff's claim for trademark infringement for failure to state a claim on which relief may be granted. The undersigned further recommends that the plaintiff's claim be dismissed without prejudice to filing a second amended complaint. Before filing any amended complaint, the plaintiff must carefully review this Recommended Ruling and ensure that any amended complaint addresses the deficiencies identified herein.

This is a Recommended Ruling. See Fed R. Civ. P. 72(b)(1). Any objections to this Recommended Ruling must be filed with the Clerk of the Court within fourteen (14) days after filing of such order. See D. Conn. L. Civ. R. 72.2(a). Any party receiving notice or an order or recommended ruling from the Clerk by mail shall have five (5) additional days to file any objection. See D. Conn. L. Civ. R. 72.2(a). Failure to file a timely objection will preclude appellate review. See 28 U.S.C. § 636(b)(1); Fed. R. Civ. P. 6(a) & 72; D. Conn. L. Civ. R. 72.2; Impala v. U.S. Dep't. of Just., 670 F. App'x 32 (2d Cir. 2016) (summary order) (failure to file timely objection to Magistrate Judge's recommended ruling will preclude further appeal to Second Circuit); Small v. Sec'y of H.H.S., 892 F.2d 15 (2d Cir. 1989) (per curiam).

Dated at New Haven, Connecticut, on this 14th day of November, 2025.

FOOTNOTES

1.   The Court also received a referral to evaluate the plaintiff's motion to proceed in forma pauperis, (Doc. Nos. 2, 9), and the Court granted that motion, (Doc. No. 11).

2.   To state a claim for trademark dilution, a plaintiff must allege that “(1) its mark is famous; (2) the defendant is making commercial use of the mark in commerce; (3) the defendant's use began after the mark became famous; and (4) the defendant's use of the mark dilutes the quality of the mark by diminishing the capacity of the mark to identify and distinguish goods and services.” Tyr Sport, Inc. v. Tyr Natural Spring Water, Inc., No. 3:12-cv-00761 (SRU), 2013 WL 2455925, at *3 (D. Conn. June 5, 2013) (quoting Savin Corp. v. Savin Grp., 391 F.3d 439, 449 (2d Cir. 2004)) (internal quotation marks omitted). Courts have concluded that fame is the “key ingredient” in a trademark dilution claim. Adidas Am., Inc. v. Thom Brown Inc., 599 F. Supp. 3d 151, 161 (S.D.N.Y. 2022); Savin Corp., 391 F.3d at 440.

3.   To state a claim for copyright infringement, a plaintiff must allege “(1) ownership of a valid copyright and (2) infringement of the copyright by the defendant.” Spinelli v. Nat'l Football League, 903 F.3d 185, 197 (2d Cir. 2018) (citation omitted).

4.   By virtue of asserting a single trademark infringement claim, it appears the plaintiff has abandoned his trademark dilution and copyright infringement claims.

5.   Because § 1114(1)(b) prohibits application of a reproduction or copy onto another item intended for commerce, it is commonly known as the “publisher-printer” or “printer or labeler” theory. See Cenage Learning, Inc. v. Google, LLC, 786 F. Supp. 3d 611, 627 (S.D.N.Y. 2025) (“publisher-printer theory”); 3 McCarthy on Trademarks & Unfair Competition (5th ed.) § 25:28.

6.   The Court notes that a separate statute, 15 U.S.C. § 1125, protects trademarks that are not federally registered. Iancu v. Brunetti, 588 U.S. 388, 391 (2019) (“Registration of a mark is not mandatory. The owner of an unregistered mark may still use it in commerce and enforce it against infringers.”); Matal v. Tam, 582 U.S. 218, 226 (2017) (“[E]ven if a trademark is not federally registered, it may still be enforceable under § 43(a) of the Lanham Act, which creates a federal cause of action for trademark infringement.”). Therefore, the plaintiff is not necessarily limited to the infringement of his registered THE RAD BLACK KIDS mark. But the plaintiff did not allege facts giving rise to an unregistered trademark infringement claim under 15 U.S.C. § 1125.

7.   The amended complaint, however, does contain new allegations regarding unnamed entities that are selling counterfeits of the Sweatshirt in commerce. (See Doc. No. 12 ¶ 12(d), Ex. F). Allegations that (1) the plaintiff used his trademark (i.e., THE RAD BLACK KIDS or an unregistered trademark) on the Sweatshirt, or a tag, label, container, or other method contemplated by § 1127, and (2) a version of the Sweatshirt with a counterfeit, reproduction, or copy of the mark is now being sold to confuse the consumer as to the source of the Sweatshirt, could theoretically constitute a trademark infringement action against the alleged third-party sellers. See Stauffer, 2025 WL 1866669, at *3 (requiring a plaintiff to plead “(1) that the plaintiff's mark is entitled to protection, and (2) that the defendant's use of the mark is likely to cause consumers confusion as to the origin or sponsorship of its goods or services”).

Robert M. Spector United States Magistrate Judge