17-3982-cv
International Leisure Products v. FUNBOY LLC

                                    UNITED STATES COURT OF APPEALS
                                       FOR THE SECOND CIRCUIT

                                           SUMMARY ORDER

RULINGS BY SUMMARY ORDER DO NOT HAVE PRECEDENTIAL EFFECT. CITATION TO A
SUMMARY ORDER FILED ON OR AFTER JANUARY 1, 2007 IS PERMITTED AND IS GOVERNED BY
FEDERAL RULE OF APPELLATE PROCEDURE 32.1 AND THIS COURT’S LOCAL RULE 32.1.1. WHEN
CITING A SUMMARY ORDER IN A DOCUMENT FILED WITH THIS COURT, A PARTY MUST CITE
EITHER THE FEDERAL APPENDIX OR AN ELECTRONIC DATABASE (WITH THE NOTATION
“SUMMARY ORDER”). A PARTY CITING TO A SUMMARY ORDER MUST SERVE A COPY OF IT ON
ANY PARTY NOT REPRESENTED BY COUNSEL.

       At a stated term of the United States Court of Appeals for the Second Circuit, held at
the Thurgood Marshall United States Courthouse, 40 Foley Square, in the City of New York,
on the 6th day of September, two thousand eighteen.

PRESENT:
           GERARD E. LYNCH,
           SUSAN L. CARNEY,
           CHRISTOPHER F. DRONEY,
                       Circuit Judges.
_________________________________________

INTERNATIONAL LEISURE PRODUCTS, INC.,

                  Plaintiff-Appellant,

                           v.                                          No. 17-3982-cv

FUNBOY LLC,

           Defendant-Appellee.
_________________________________________

FOR APPELLANT:                                       BRIAN L. WAMSLEY, Ware, Fressola,
                                                     Maguire & Barber LLP, Monroe, CT.

FOR APPELLEE:                                        RICHARD S. MILLS, McElroy, Deutsch,
                                                     Mulvaney & Carpenter, LLP, New York,
                                                     NY.
        Appeal from a judgment of the United States District Court for the Eastern District
of New York (Feuerstein, J.).

        UPON DUE CONSIDERATION WHEREOF, IT IS HEREBY ORDERED,
ADJUDGED, AND DECREED that the judgment entered on November 14, 2017, is
AFFIRMED.

        Plaintiff-appellant International Leisure Products, Inc. (“ILP”) appeals from a
judgment entered in the United States District Court for the Eastern District of New York
(Feuerstein, J.), dismissing under Federal Rule of Civil Procedure 12(b)(6) ILP’s claims
against defendant-appellee FUNBOY LLC (“Funboy”) for, inter alia, trade dress
infringement and unjust enrichment. We assume the parties’ familiarity with the underlying
facts, procedural history, and arguments on appeal, to which we refer only as necessary to
explain our decision to affirm.

        ILP alleges that, since 2007, it has manufactured and sold large inflatable pool toys
shaped like swans, flamingoes, and other birds, under the brand name GIANT SWAN™.
ILP has invested more than $1 million in promoting its inflatable swan pool toy, as part of a
product line that currently generates approximately $6 million in sales each year. Funboy,
too, manufactures and sells an inflatable swan-shaped pool toy, as well as floats shaped like
flamingoes and flying horses. According to ILP, Funboy’s swan toy closely resembles ILP’s.
While concededly holding no registered trademark in its GIANT SWAN™ design, ILP
asserts that Funboy has impermissibly infringed on ILP’s protectable trade dress in this
product. 1 The claimed trade dress consists of the “composite arrangement” of the following
seven elements, as described by ILP:


1
  It is unclear from the second amended complaint whether ILP intends to assert trade dress claims
solely with regard to the swan-shaped pool floats, or also regarding its entire product line of pool
floats that share similar structural features. Compare, e.g., Joint App’x 14 ¶ 26 (“Funboy’s inflatable
swan pool toy products infringe the GIANT SWAN™ Trade Dress in at least as much as they feature a
swan design incorporating” the seven asserted trade dress elements. (emphases added)), with id. 15 ¶ 28
(“Funboy’s inflatable swan and other inflatable pool toy products infringe ILP’s exclusive rights in its
GIANT SWAN™ Trade Dress.” (emphasis added)). At oral argument, however, ILP disclaimed any
intent to assert a protected trade dress in the product line.

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           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.

Joint App’x 10–11.

       In its second amended complaint, filed in February 2017, ILP asserts seven causes of
action against Funboy: four claims under section 43 of the federal Lanham Act, 15 U.S.C.
§ 1125 (for trade dress infringement, false designation of origin, unfair competition, and
trademark dilution); and three claims under New York State law (for trademark
infringement, trademark dilution, and unjust enrichment). In an order dated November 9,
2017, the District Court dismissed all of ILP’s claims with prejudice under Rule 12(b)(6)
after concluding that, in its second amended complaint, ILP failed adequately to allege a
protectable trade dress in its GIANT SWAN™ inflatable pool toys. We review the District

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Court’s dismissal de novo, taking as true the allegations in ILP’s second amended complaint
and drawing all reasonable inferences in ILP’s favor. Progressive Credit Union v. City of New
York, 889 F.3d 40, 48 (2d Cir. 2018).

       Federal trademark law protects recognizable trademarks, with the goal of benefiting
both consumers (who rely on trademarks as a signifier of source and quality) and trademark
owners (who have a right to protect and profit from their reputation in the market). See
Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206, 215–16 (2d Cir.
2012). Trademark protection may apply not only to words or symbols, see 15 U.S.C. § 1127,
but also to “trade dress,” a concept that “encompasses the overall design and appearance
that make the product identifiable to consumers,” Nora Beverages, Inc. v. Perrier Grp. of Am.,
Inc., 269 F.3d 114, 118 (2d Cir. 2001). We “exercise particular caution when extending
protection to product designs” in this way. Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 114
(2d Cir. 2001) (internal quotation marks omitted). Unlike patent and copyright law, which
“bestow limited periods of protection,” trademark protection is open-ended. Id. at 115. It is
“not intended to protect innovation by giving the innovator a monopoly over a useful
product feature.” Christian Louboutin, 696 F.3d at 216 (emphases, alterations, and internal
quotation marks omitted).

       A plaintiff who asserts a trademark claim bears the burden of, inter alia, establishing a
protectable trademark. See id. “[F]or a trademark to be protectable, the mark must be
‘distinctive’ and not ‘generic.’” Id. Trade dress law does not protect “an idea, a concept, or a
generalized type of appearance.” Yurman, 262 F.3d at 115 (internal quotation marks omitted).

       Here, we agree with the District Court’s conclusion that ILP has failed to allege a
distinct, non-generic trade dress in its GIANT SWAN™ pool floats. Notably, several of
ILP’s asserted trade dress elements contain subjective descriptors like a “pleasing
appearance” or an “aesthetic proportion.” We have refused protection where, as here, a
claimed trade dress lacked sufficiently objective identifiers. See Yurman, 262 F.3d at 117
(rejecting claimed trade dress consisting of an “artistic combination of cable jewelry with
other elements,” noting that “the word ‘artistic’ simply begs a question” (alteration omitted)).

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In addition, some of the alleged trade dress elements contain “optional” or alternative
features. The lack of objective metrics, combined with the multiplicity of possible
combinations of optional features, makes it difficult to discern in ILP’s description a single
distinctive look. See Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 381 (2d Cir.
1997) (Courts cannot “shape narrowly-tailored relief if they do not know what distinctive
combination of ingredients deserves protection.”).

       In an attempt to shore up the weaknesses of its written description, ILP points to the
photograph in its complaint and argues that it may define its trade dress in a “conjoint
presentation of textual description and image.” Appellant’s Br. 31. We explained in Yurman,
however, that a visual representation of the asserted trade dress does not excuse “the party
seeking protection” from its burden of “point[ing] to the elements and features that
distinguish its trade dress.” 262 F.3d at 117 (emphasis added).

       In our view, a swan-shaped pool float represents the type of design choice that is
“almost invariably” intended “to render the product itself more useful or more appealing”
rather than to “identify the [product’s] source.” Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529
U.S. 205, 213 (2000) (emphasis added) (discussing “a cocktail shaker shaped like a
penguin”). 2 Source identification, though, is the key consideration for trademark law’s twin
goals of protecting consumers from confusion and protecting manufacturers from unfair
competition. See id. at 211–13. ILP appears to be seeking protection for a trade dress that
would encompass any bird-shaped pool float with even a passing resemblance to ILP’s
GIANT SWAN™. We therefore conclude that ILP’s claimed trade dress is impermissibly
overbroad, and that, as a result, it has failed to state a claim for trade dress infringement
under the Lanham Act. See Yurman, 262 F.3d at 115 (defining a “generic” trade dress as one


2
  The Samara Court held that an unregistered design-based trade dress cannot be inherently distinctive,
and that a plaintiff seeking to protect such a trademark must establish distinctiveness based on an
acquired secondary meaning. See 529 U.S. at 216. In this case, we need not reach the issue of
acquired secondary meaning in light of our conclusion that ILP’s claimed trade dress is
impermissibly generic. Yurman, 262 F.3d at 115 (“[E]ven a showing of secondary meaning is
insufficient to protect product designs that are overbroad or generic.” (internal quotation marks
omitted)).

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that “refer[s] to the genus of which the [plaintiff’s] particular product is a species”). ILP does
not dispute the District Court’s determination that, absent a protectable trade dress, ILP
cannot assert a valid claim under federal or state law for trademark infringement, false
designation of origin, unfair competition, or trademark dilution. We accordingly affirm the
District Court’s dismissal of those claims.

       Independent of its trademark claims, ILP challenges the dismissal of its claim for
unjust enrichment. To state such a claim, however, ILP must allege that Funboy obtained
some unfair benefit. See Corsello v. Verizon N.Y., Inc., 18 N.Y.3d 777, 790 (2012) (“The basis
of a claim for unjust enrichment is that the defendant has obtained a benefit which in equity
and good conscience should be paid to the plaintiff.” (internal quotation marks omitted)). If
ILP has no protectable trade dress in its GIANT SWAN™ product, then ILP’s allegations
of wrongdoing describe nothing more than fair competition in the market for large,
inflatable, animal-shaped pool toys, an inadequate basis for a claim of unjust enrichment. We
accordingly affirm the District Court’s dismissal of this claim as well.

       Finally, ILP argues that the District Court erred in dismissing its second amended
complaint with prejudice. We review that action for abuse of discretion. TechnoMarine SA v.
Giftports, Inc., 758 F.3d 493, 505 (2d Cir. 2014). Here, ILP amended its pleading once as of
right before effectuating service, and a second time after receiving notice of Funboy’s
anticipated motion to dismiss. ILP did not seek leave from the District Court to file a third
amended complaint, either in its opposition to Funboy’s motion to dismiss, or after the
District Court granted Funboy’s motion. Moreover, ILP does not, in its appellate brief,
“specify how it could cure its pleading deficiencies” if leave were granted to further amend
its complaint. Id. at 506. We therefore find no abuse of discretion in the District Court’s
decision to enter a judgment against ILP of dismissal with prejudice.

                                              * * *




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      We have considered ILP’s remaining arguments and find them to be without merit.
For the reasons set forth above, the judgment of the District Court is AFFIRMED.

                                               FOR THE COURT:
                                               Catherine O’Hagan Wolfe, Clerk of Court




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