International Leisure Products, Inc. v. Sunnylife Australia et al

Filing 39

OPINION AND ORDER. Plaintiff's federal claims arising under the Lanham Act are dismissed with prejudice. The Court declines to exercise jurisdiction over the remaining state-law claims. See 28 U.S.C. § 1367(c)(3). The Clerk of Court is respectfully requested to terminate the motion at ECF No. 32 and close this case. So ordered. (Signed by Judge Nelson Stephen Roman on 3/12/2018) (rjm)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
INTERNATIONAL LEISURE PRODUCTS, INC.,
Plaintiff,
No. 16-cv-6215 (NSR)
OPINION & ORDER

-againstSUNNYLIFE AUSTRALIA, SUNNYLIFE USA,
BLOOMINGDALES, INC.,
Defendants.
NELSONS. ROMAN, United States District Judge

· Plaintiff International Leisure Products, Inc. ("ILP"), brings this action against Sunnylife
Australia, Sunnylife USA, and Bloomingdales, Inc. (collectively, "Defendants"), alleging federal
trade dress infringement, federal false designation of origin, federal unfair competition, and federal
dilution in violation of the Lanham Act, 15 U.S.C. § 1125, as well as state law trademark
infringement, state law dilution, unjust enrichment, and injunctive relief. Before this Court is
Defendants' Motion to Dismiss the Second Amended Complaint pursuant to Federal Rule of Civil
Procedure 12(b)(6). For the following reasons, Defendants' Motion is GRANTED.

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BACKGROUND
Plaintiff International Leisure Products, Inc. (“ILP”) is a New York corporation with its
principal place of business in Edgewood, New York. (Second Amended Complaint (“Compl.”) ¶
6, ECF No. 31.) ILP manufactures and sells inflatable swimming pool toy products under their
“GIANT SWAN™” brand (“Giant Swan”). (Id. ¶ 10.) ILP’s Giant Swan inflatable pool toy
product line is comprised of several products including inflatable swans of different sizes and
colors, inflatable flamingos, ducks, toucans, parrots and eagles. (Id. ¶ 13.) Their Giant Swan
swimming pool toy products are widely sold in retail and online outlets across the country. (Id. ¶
10.)
In or around 2007, ILP introduced its “Inflatable Swan” pool toy as a part of their Giant
Swan product line. (Id. ¶12.) Since its introduction, ILP alleges that it built substantial brand
awareness and good will through extensive advertising, promotional efforts and sales. Their Giant
Swan pool toy products, including the Inflatable Swan, have received unsolicited publicity,
reviews and news coverage stemming from their popularity and use by celebrities. Plaintiff
invested more than $1 million in advertising and promoting its Inflatable Swan and more than $1.3
million in advertising and promoting its Giant Swan pool toy product line. (Id. ¶ 12.) The Giant
Swan product line generates at least $6 million in sales per year and the Inflatable Swan pool toy
accounts for about half of yearly sales. (Id. ¶ 13.)
The Inflatable Swan
ILP’s most prominent product of the Giant Swan line is their Inflatable Swan. The
Inflatable Swan is a large flotation device that resembles a swan. ILP has invested considerable
resources in creating and promoting the physical appearance of their Inflatable Swan. (Id. ¶ 23.)
Their goal was to create an inflatable pool toy product design with features that are distinctive,
memorable, and appealing to customers. (Id.) The Inflatable Swan consists of an arrangement of
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seven elements which Plaintiff alleges are “collectively ornamental and do not serve any
functional purpose.” (Id. ¶ 17.)
Those elements as described by the Plaintiff are:
(a) the circular or elliptical periphery and recessed interior configuration of the
inflatable base with a height in proportion to the circumference of the base to
provide a pleasing appearance; (b) the substantially vertical inclination and
straight line of the “neck” portion projecting from the periphery of the base, the
neck having a particular thickness and height to be in aesthetic proportion to the
base; (c)the stylized depiction of the head including the face of a bird, possibly
resembling a swan, wherein the stylized countenance has two eyes each having a
dark periphery and a light or white center, and a bill or beak surrounded by a
shaped border that merges with the periphery of the eyes; (d) the elongated
tubular shape of the stylized appendages located on opposite sides of the base,
with a height and thickness in aesthetic proportion to the base and optional
horizontal arcing lines, the stylized appendages being instead of a bird’s wings
and also optionally having a generally conical upwardly inclined protuberance;
(e)the conical shape of the tail, and the substantially upward inclination of that
conical shape from the periphery of the base at the end opposite that from which
extends from the neck; (f) a signature color scheme with white, black, gold or
pink coloration of the body, orange coloration of the bill/beak and the described
coloration of other facial features; and(g) an overall smooth and flexible texture.
(Id. ¶17 (a)–(g).)1 ILP alleges that these purportedly non-functional elements comprise their
product’s trade dress within the meaning of the Lanham Act. (See Id. ¶ 18, 22.) These elements,
Plaintiff alleges, are not essential, even from an aesthetic standpoint, to the use, purpose, cost or
quality of the inflatable pool toy product. (Id. ¶18.) Instead, Plaintiff describes the Inflatable
Swan’s appearance as being comprised of “fanciful elements that individually and in
combination create an overall distinctive appearance that is readily identifiable by consumers as
signifying a product originating with ILP and/or associated with the GIANT SWAN™ brand.”
(Id. ¶ 14.)
As a result of ILP’s work in developing the Giant Swan’s appearance, coupled with their
large-scale national advertisement campaigns promoting the Giant Swan pool toy product line,

1

See Appendix, Exh. 1.

3

ILP alleges that “consumers have come readily to associate the GIANT SWAN™ Trade Dress
with, and rely on it to identify, inflatable pool toy products of the highest quality that originate
from a single source (i.e., ILP).” (Id. ¶ 24.) Consequently, the Giant Swan brand has built
substantial goodwill and consumer brand loyalty. (Id.)
Competing Product
Defendants Sunnylife USA and Sunnylife Australia (collectively, “Sunnylife”)
manufacture and distribute inflatable pool toy products in retail and online outlets under the
brand name “Sunnylife.” (Id. ¶ 25.) Defendant Bloomingdales sells Sunnylife’s products at their
retail stores throughout the country, including its retail store in White Plains, New York. (Id. ¶
26.) Most relevant here is that Sunnylife also manufactures and distributes a large inflatable
swan pool toy. Sunnylife’s iteration, however, is marketed as the “Really Big Inflatable Swan.”
This product is available for purchase in white, black and gold, and in two smaller sizes. (Id. ¶
25.) Plaintiff alleges that Defendants Sunnylife have copied, and continue to copy, the Inflatable
Swan’s trade dress.
Plaintiff further posits that Sunnylife’s inflatable pool toy products compete directly with
ILP’s Giant Swan inflatable pool toy product line on the basis of “their comparable
functionality”2 and that Sunnylife intended to appropriate the Giant Swan trade dress and the
good will associated with Plaintiff’s brand. (See Id. ¶ 27–28.) Plaintiff claims that Sunnylife’s
Really Big Inflatable Swan is a “virtually identical” replica of their Inflatable Swan and that it
copies “nearly every distinctive feature” of the Giant Swan trade dress. (Id. ¶ 29.)

Plaintiff notes that the parties’ inflatable pool toy products are typically sold side by side on
online outlets. (Compl. ¶ 27.)
2

4

Consequently, Plaintiff asserts that Sunnylife’s Really Big Inflatable Swan infringes on
the Giant Swan trade dress. (Id. ¶ 30.) Plaintiff specifically identifies seven features from
Sunnylife’s version which together infringe on the Giant Swan Trade Dress:
(a) a circular or elliptical inflatable base with a recessed interior, the base being of
a height in proportion to the circumference of the base to provide a pleasing
appearance, which simulates ILP’s Trade Dress element “a”, paragraph 17; (b) an
upright “neck” portion placed on the periphery of the base, the neck having a
particular thickness and height in aesthetic proportion to the base, which simulates
ILP’s Trade Dress element “b”, paragraph 17; (c) the neck also having on its
upper end a stylized depiction of the head and face of a swan, the head and face
further consisting of two dark-edged eyes and a dark bordered bill or beak with
the dark edging of the eyes flowing into the dark border of the bill or beak, which
simulates ILP’s Trade Dress element “c”, paragraph 17; (d) two stylized
appendages located on opposite sides of the base, the appendages being generally
of an elongated, tubular shape with a height and thickness in aesthetic proportion
to the base, each having a distinct protuberance as well as has horizontal arced
lines, which simulates ILP’s Trade Dress element “d”, paragraph 17; (e) a conical
protuberance extending upwardly from the circumference of the base opposite to
the neck, which simulates ILP’s Trade Dress element “e”, paragraph 17; (f) a
color scheme like ILP’s, and (g) an overall smooth and flexible texture.
(Id. ¶ 30 (a)–(g).)3
Defendants moves to dismiss the Second Amended Complaint pursuant to Federal Rule
of Civil Procedure 12(b)(6) for failure to state a claim upon which relief can be granted. (Def.
Mem. of Law in Supp. of Mot. to Dismiss Pl. Second Amended Compl. (“Def. Mot.”) 1, ECF
No. 32.)
STANDARD ON A MOTION TO DISMISS
A Rule 12(b)(6) motion tests the legal sufficiency of a complaint and requires a court to
determine whether the facts alleged are sufficient to show that the plaintiff has a plausible claim
for relief. See Ashcroft v. Iqbal, 556 U.S. 662, 679 (2009). When ruling on a Rule 12(b)(6)
motion, a court must accept the factual allegations set forth in the complaint as true and draw all

3

See Appendix, Exh. 2.

5

reasonable inferences in favor of the plaintiff. See, e.g., Holmes v. Grubman, 568 F.3d 329, 335
(2d Cir. 2009). To survive such a motion, however, the plaintiff must plead sufficient facts “to
state a claim to relief that is plausible on its face.” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570
(2007). A claim is facially plausible “when the plaintiff pleads factual content that allows the
court to draw the reasonable inference that the defendant is liable for the misconduct alleged.”
Iqbal, 556 U.S. at 678. In determining whether a complaint states a plausible claim for relief, a
district court must consider the context and “draw on its judicial experience and common sense.”
Id. at 679. In assessing whether this standard has been met, courts take “all factual allegations
contained in the complaint” as true, Twombly, 550 U.S. at 572, and “draw all inferences in the
light most favorable to the non-moving party[ ],” In re NYSE Specialists Sec. Litig., 503 F.3d 89,
95 (2d Cir. 2007) (citation omitted).
A plaintiff must show “more than a sheer possibility that a defendant has acted
unlawfully,” id., and cannot rely on mere “labels and conclusions” to support a claim. Twombly,
550 U.S. at 555. If the plaintiff's pleadings “have not nudged [his or her] claims across the line
from conceivable to plausible, [the] complaint must be dismissed.” Id. at 570.
DISCUSSION
Plaintiff asserts seven causes of action stemming from Defendants’ alleged use of the
Giant Swan trade dress. The Court takes the relevant claims in turn.
Federal Trade Dress Infringement
Plaintiff alleges that the Defendants violated Section 43(a) of the Lanham Act, 15 U.S.C.
§ 1125(a).
The purpose of federal trademark laws, such as the Lanham Act, is to “secure the public's
interest in protection against deceit as to the sources of its purchases, [and] the businessman’s

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right to enjoy business earned through investment in the good will and reputation attached to a
trade name.” Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d
206, 215 (2d Cir. 2012) (quotations and citation omitted). Congress intended the Lanham Act to
make “‘actionable the deceptive and misleading use of marks,’ and ‘to protect persons engaged
in . . . commerce against unfair competition.’” Dastar Corp. v. Twentieth Century Fox Film
Corp., 539 U.S. 23, 29 (2003) (quoting 15 U.S.C. § 1127). The Act provides protections for both
registered and unregistered marks. See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S.
205, 209–10 (2000); Urban Group Exercise Consultants, LTD., v. Dick’s Sporting Goods Inc.,
No. 12 Civ. 3599(RWS), 2012 WL 3240442, at *3 (S.D.N.Y. Aug. 7, 2012). Despite the
Lanham Act’s proscriptive function, its protections “must be construed in the light of a strong
federal policy in favor of vigorously competitive markets.” Nora Beverages, Inc. v. Perrier
Group of America, Inc., 269 F.3d 114, 119 (2d Cir. 2001).
Most relevant to this case, Section 43(a) of the Act protects what is known as a product’s
“trade dress— a category that originally included only the packaging, or dressing, of a product,
but in recent years has been expanded by many Courts of Appeals to encompass the design of a
product.” Wal-Mart, 529 U.S. at 209. A product’s trade dress simply means “‘the total image of
a product and may include features such as size, shape, color or color combinations, texture or
graphics.’” Ward v. Andrews McMeel Publ’g, LLC, 963 F. Supp. 2d 222, 235 (S.D.N.Y. 2013)
(quoting Stormy Clime Ltd. v. ProGroup, Inc., 809 F.2d 971, 974 (2d Cir. 1987)). Trade dress
may refer to a single element of a product or a combination thereof. When a Plaintiff asserts that
a product’s trade dress consists of multiple elements, a court must evaluate those features taken
together, and not in isolation. See Maharishi Hardy Blechman Ltd. v. Abercrombie & Fitch Co.,
292 F. Supp. 2d 535, 548 (S.D.N.Y. 2003) (“Where the asserted trade dress extends to the

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‘overall look’ of the combination of features comprising a product or product line, the Court
must evaluate the distinctiveness and functionality of those features taken together, not in
isolation”). Although federal law offers protection for trade dress, a product’s trade dress “must
subsist with the recognition that in many instances there is no prohibition against copying goods
and products. In general, unless an intellectual property right such as a patent or copyright
protects an item, it will be subject to copying.” Nora Beverages, 269 F.3d at 19 (quoting TrafFix
Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001)).
A Plaintiff bringing a trade dress infringement claim based on the appearance of a
product “must allege that (1) the claimed trade dress is non-functional; (2) the claimed trade
dress has secondary meaning; and (3) there is a likelihood of confusion between the plaintiff’s
good and the defendant’s.” Ward, 963 F. Supp. 2d at 235 (S.D.N.Y. 2013) (citing Sherwood 48
Associates v. Sony Corp. of America, 76 F. App’x 389, 391 (2d Cir. 2003). Additionally, Plaintiff
must “offer a precise expression of the character and scope of the claimed trade dress.”
Sherwood, 76 F. App’x at 391.
Under the first element, Plaintiff must plead that their unregistered trade dress is “nonfunctional.” See Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 116 (2d Cir. 2001); Ward, 963
F. Supp. 2d at 238.4 Federal law recognizes two forms of functionality: (1) traditional/utilitarian
functionality; and (2) aesthetic functionality. Louboutin, 696 F.3d at 219. A product feature is
functional under the traditional Inwood definition “if it is essential to the use or purpose of the
article or if it affects the cost or quality of the article.” Id. (quoting Inwood Labs., Inc. v. Ives
Laboratories, Inc., 456 U.S. 844, 850 n.10 (1982)). “A feature is essential if [it] is dictated by the
functions to be performed by the article.” Id. (quotations and citations omitted). If the trade dress

4

This element refers to what courts recognize as the “functionality doctrine.”
8

is functional under Inwood, then the inquiry ends there. However, if the trade dress is not
functional under the traditional Inwood test, and Plaintiff asserts that the elements of their trade
dress are ornamental or aesthetic, the aesthetic functionality doctrine requires the additional factintensive inquiry recognized in Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165
(1995) and TrafFix, 532 U.S. at 32, namely “if exclusive use of the feature would put
competitors at a significant non-reputation-related disadvantage.” Louboutin, 696 F.3d at 219–
20; DO Denim, LLC v. Fried Denim, Inc., 634 F. Supp. 2d 403, 408 (S.D.N.Y. 2009) (noting that
in cases involving the functionality of aesthetic features, “the [trade] dress is also functional if
the right to use it exclusively would put competitors at a significant non-reputation-related
disadvantage”) (citing Yurman Design, 262 F.3d at 116).
The functionality doctrine “prevents trademark law, which seeks to promote competition
by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a
producer to control a useful product feature.” Qualitex, 514 U.S. at 164. The functionality
analysis requires a careful balance of “the policy of protecting consumers from confusion against
that in favor of free competition.” Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d
373, 377 (2d Cir. 1997). In making that balance, the functionality doctrine denies protection
where an “ornamental feature is claimed as a trademark and trademark protection would
significantly hinder competition by limiting the range of adequate alternative designs” but may
protect “distinctive and arbitrary arrangements of predominantly ornamental features that do not
hinder potential competitors from entering the same market with differently dressed versions of
the product.” Louboutin, 696 F.3d at 222 (quotations and citations omitted).
The Defendants move to dismiss the trade dress infringement claim solely on the
functionality prong. (Def. Mot. 7.) Defendants argue that the elements of the Plaintiff’s Inflatable

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Swan at issue in this case are functional, and thus, Plaintiff fails to state a claim upon which
relief can be granted. (Id. 10, 14.) Specifically, Defendant contends that the “elements articulated
by Plaintiff clearly serve[] a utilitarian function including flotation, seating, grip, and stability.”
(Id. 14.) Further, Defendant claims that the elements serve an aesthetic function, such as
depicting the swan’s body, head, neck, face, wings, and tail. (Id.) The aesthetic elements are
functional because the right to use them exclusively would put Defendants at a significant nonreputation-related disadvantage. (Id.) Lastly, Defendants posit that Plaintiff failed to plead nonfunctionality with sufficient particularity. (Id.)
Plaintiff retorts by noting that their trade dress is comprised of a number of elements
which are ornamental and source-indicative in and of themselves. (Pl. Mem. Opp. Mot. to
Dismiss Second Amended Compl. (“Pl. Mot.”) 6, ECF No. 34.) Further, the Giant Swan trade
dress does not consist of separate elements in isolation, but rather, the combination of specified
“ornamental elements . . . irrespective of individual functionality.” (Id.) Further, Plaintiff posits
that they properly alleged that the trade dress elements are non-functional because they are not
“essential to the use, cost or quality of its inflatable toy product.” (Id. 9 (internal quotations
omitted).)
Defendants’ motion to dismiss is granted because the Plaintiff failed to plead sufficient
facts to support the functionality prong of a trade dress infringement claim.5

5

Failure to properly plead non-functionality undermines the rest of the Lanham Act claims
because the Act does not protect trade dress that is functional. See Telebrands Corp. v. Del
Laboratories, Inc., 719 F. Supp. 2d 283, 296–98 (S.D.N.Y. 2010) (dismissing federal unfair
competition claim because Plaintiff did not properly plead that their trade dress was not
functional); DO Denim, 634 F.Supp.2d at 408 (“Plaintiff must also [properly plead] nonfunctionality when claiming trade dress dilution pursuant to Section 43(c) of the Lanham Act”);
Fraga v. Smithaven MRI, 866 F. Supp. 107, 110 (E.D.N.Y. 1994) (“In order to prevail on a
federal false designation of origin claim, the movant must make an initial showing that its mark
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The Plaintiff’s detailed complaint6 tracks the seven features comprising the Giant Swan
trade dress as exhibited by its Inflatable Swan as well as the features of the Defendant’s Really
Big Inflatable Swan, which purportedly infringes upon the Giant Swan trade dress. Plaintiff does
not assert in conclusive terms that the trade dress is non-functional, but rather, properly pleads
facts buttressing their proposition. See Visual Impact Films Corp. v. Athalon Sportgear, Inc., 16
CV 355 (VB), 2016 WL 6426399, at *2 (S.D.N.Y. Oct. 27, 2016). Plaintiff describes, with
particularity, the shape, size, and composition of their product. Further, the Plaintiff asserts that
the described elements are “both individually and collectively ornamental and do not serve any
functional purpose.” (Compl. ¶ 17.) These elements, the Plaintiff posits, are not essential to the
use, purpose, and cost or quality of their product because there is no necessity to arrange the
elements in the manner in which they did in order to evoke a swan or another bird. (Id. ¶18.) The
Complaint also posits that the trade dress is not functional because it is distinctive and serves as a
“source identifier” which consumers associate with their trade dress. (Id. ¶ 22.) In this case,
“plaintiff describes its trade dress in terms of aesthetics, not functionality.” Visual Impact, 2016
WL 6426399, at *3. Thus, Plaintiff appears to have alleged sufficient facts to state a claim upon
which relief can be granted under the traditional Inwood test.

or name warrants protection under the Lanham Act”) (citing Western Publishing Co. v. Rose Art
Indus., 910 F.2d 57, 59 (2d Cir.1990)).
6
It bears noting that the Defendant argues that the Court should consider the Plaintiff’s First
Amended Complaint (“FAC”) because the facts stated in that complaint contradict the factual
allegations in the Second Amended Complaint. (Def. Mot. 4.) The Court finds this argument
unavailing. Although it is true that a Court may consider a prior complaint where the Plaintiff
contradicts the facts set forth in the prior pleading, Dozier v. Deutsche Bank Trust Co. Americas,
No. 09 Civ. 9865(LMM), at *2 (S.D.N.Y Sept. 1, 2011), the FAC does not contradict the Second
Amended Complaint. Although the FAC lacks the specificity exhibited in the Second Amended
Complaint, it is clear from the reading of the FAC that Plaintiff merely attempted to refine the
language in their claims rather than change their factual allegations altogether.
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Plaintiff’s trade dress claims, however, are based on the product’s aesthetics and
ornamental features which, as the Defendant rightfully points out, requires an additional
inquiry—namely “if the right to use [the trade dress] exclusively would put competitors at a
significant non-reputation-related disadvantage.” Yurman Design, Inc., 262 F.3d at 116
(quotations and citation omitted). Although a finding of whether a trade dress is functional is
“essentially a fact question,” Eliya, Inc. v. Kohl’s Dept. Store, No. 06 Civ 195(GEL), 2006 WL
2645196, at *4 (S.D.N.Y. Sept. 13, 2006), Plaintiff must, of course, allege sufficient facts
pertaining to the functionality prong.
Throughout the Second Amended Complaint, Plaintiff makes repeated references to the
connection between the Giant Swan trade dress and the reputation of their Inflatable Swan.
However, nowhere in the Second Amended Complaint does the Plaintiff allege whether
protecting the Giant Swan trade dress would put “competitors at a significant non-reputationrelated disadvantage.” See DO Denim, LLC, 634 F. Supp. 2d at 408 (granting Defendant’s
motion to dismiss in part because Plaintiff did not make factual allegations as to whether
protecting the alleged trade dress would put competitors at a significant non-reputation- related
disadvantage). It is incumbent upon Plaintiff to provide factual allegations as to why their trade
dress is not aesthetically functional and why the ornamental features of the product merit
protection. 15 U.S.C. § 1125(a)(3) (“In a civil action for trade dress infringement under this
chapter for trade dress not registered on the principal register, the person who asserts trade dress
protection has the burden of proving that the matter sought to be protected is not functional”).
Thus, Defendants’ motion to dismiss must be granted because Plaintiff failed to make factual
allegations as to why protecting their trade dress would not put competitors at a significant nonreputation-related advantage.

12

Further, not only did Plaintiff fail to allege facts central to the aesthetic functionality
inquiry, but also attempts to protect a trade dress, which in its totality, represents features that are
necessary for competition in the market for swan-like pool toy products. It is well established in
the Second Circuit that a trade dress is aesthetically functional when it is purely ornamental and
the features are necessary for competition in the relevant market. Wallace Int’l Silversmiths, Inc.
v. Godinger Silver Art Co., Inc., 916 F.2d 76, 81(2d Cir. 1990) (holding that ornamental features
of a product are aesthetically functional when their use is necessary for competition in the
relevant market), abrogated by Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992). In
Wallace, Plaintiff sought trademark protection for certain elements of their baroque-style
silverware. Id. The Second Circuit held that the aesthetic functionality doctrine barred such
protection because Plaintiff did not seek protection “for a precise expression of a decorative
style, but for basic elements of a style that is part of the public domain.” Id.
Similarly here, Plaintiff’s verbose description does not provide sufficient factual
allegations describing how their product’s trade dress is not commonplace or ubiquitous in the
inflatable pool toy market, thus significantly hindering competition in the relevant market. The
seven elements provided by the Plaintiff describe, in great detail, the composition and position of
the Inflatable Swan’s body, neck, head, wings, tail, color scheme, and texture. Plaintiff, however,
failed to describe anything particularly unique about their product’s trade dress. Plaintiff simply
described the basic elements of a swan that floats on water—basic elements which are readily
available in the public domain. Wallace, 916 F.2d at 81–82; see also Bubble Genius, 239 F.
Supp. 3d at 596 (noting that the functionality doctrine bars the protection of basic elements of a
style that is part of the public domain). Given Plaintiff’s description of their Giant Swan trade
dress, Plaintiff, conceivably, would be capable of successfully challenging just about any

13

iteration of an inflatable swan pool toy. That conclusion unde1mines the purpose of the Lanham
Act, and would essentially provide the Plaintiff with a perpetual monopoly on inflatable swanlike toy products. Se_e Louboutin, 696 F.3d at 218-19. Consequently, taking the complaint's
factual allegations as hue, and drawing all inferences in the light most favorable to the Plaintiff,
ILP has not stated a claim upon which relief can be granted.
CONCLUSION
Plaintiffs federal claims arising under the Lanham Act are dismissed with prejudice. The
Court declines to exercise jurisdiction over the remaining state-law claims. See 28 U.S.C. §
1367(c)(3). The Clerk of Court is respectfully requested to terminate the motion at ECF No. 32
and close this case.
Dated:

March 12, 2018
White Plains, New York

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Appendix
Exhibit 1: ILP "Inflatable Swan"

Exhibit 2: Snnnylife "Really Big Inflatable Swan"

~

SUNNY LIFE

'iJ
\

REALLY BIG

INFLATABLE SWAN

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