United States v. Foote

F I L E D
United States Court of Appeals
Tenth Circuit
PUBLISH
July 6, 2005
UNITED STATES COURT OF APPEALS
PATRICK FISHER
Clerk
TENTH CIRCUIT

UNITED STATES OF AMERICA,

Plaintiff-Appellee,
No. 03-3263
v.

JEROME DANIEL FOOTE,

Defendant-Appellant.

Appeal from the United States District Court
for the District of Kansas
(D.C. No. 00-CR-20091-KHV)

Terrence J. Campbell, Barber Emerson, L.C., Lawrence, Kansas, for Defendant-
Appellant.

Scott C. Rask, Assistant United States Attorney (Eric F. Melgren, United States
Attorney, with him on the brief), Kansas City, Kansas, for Plaintiff-Appellee.

Before SEYMOUR, PORFILIO, and MURPHY, Circuit Judges.

MURPHY, Circuit Judge.
I. INTRODUCTION

Jerome Foote was convicted in United States District Court for the District

of Kansas of trafficking in counterfeit goods and conspiring to traffic in

counterfeit goods based on his sale of a single counterfeit Mont Blanc pen in

violation of the Counterfeit Trademark Act, 18 U.S.C. § 2320, and 18 U.S.C.

§ 371. He now appeals his convictions and sentence. This court has jurisdiction

pursuant to 28 U.S.C. § 1291 and affirms Foote’s convictions. Because the

district court applied the wrong version of the United States Sentencing

Guidelines (“U.S.S.G.”), however, this court remands the case for resentencing.

II. BACKGROUND

Foote was charged in the district court with forty-four counts of

counterfeiting, conspiracy to counterfeit, money laundering, and engagement in an

unlawful monetary transaction. The indictment alleged that Foote had sewed or

glued a variety of counterfeit trademarks onto goods such as purses, scarfs,

watches, pens, shirts, and sunglasses, and then sold these products to the public.

Foote originally sold the goods from his residence in Lenexa, Kansas. He openly

advertised his business, which he called “Replicas,” as offering high-quality

reproductions of brand-name products.

FBI Special Agent Albert Pisterzi was one recipient of a mailing promoting

Foote’s business. In response to the mailing, Pisterzi went to Foote’s home and

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observed that Foote was selling goods from which the original tags had been

removed and replaced with tags bearing various famous trademarks. Two months

later, Richard Smith, a private investigator employed by a firm representing

trademark owners, went to Foote’s home and determined that at least some of the

goods sold by Foote were counterfeit. Foote told Smith during the visit that the

items were the “best damn copies in the world that money could buy.”

Foote later relocated Replicas from his home to a strip mall in Lenexa.

Smith, along with FBI Special Agents Stanley Wright and Melissa Osborne,

visited the store on November 22, 1998, and purchased $466 worth of

merchandise that Smith determined was counterfeit. Among the items purchased

was a pen with a counterfeit Mont Blanc trademark symbol. These purchases

made Foote suspicious that he was under investigation, and by the end of the next

day he had moved all the counterfeit merchandise out of the store.

Based on the purchased goods, Wright applied for and was granted a search

warrant for Foote’s store. In his supporting affidavit, however, Wright failed to

reveal his knowledge that Foote had already removed all the counterfeit

merchandise. After Wright determined that Foote had returned some of the goods

to the store, he executed the warrant on December 7, 1998, and seized

approximately 5200 items. Following a pretrial suppression hearing, the district

court concluded that by omitting his knowledge that Foote had removed the

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counterfeit goods, Wright had intentionally or recklessly omitted material

information from his affidavit that would have negated probable cause. The court

therefore granted Foote’s motion to suppress all the evidence seized from the

store pursuant to Franks v. Delaware, 438 U.S. 154 (1978). The court did not,

however, suppress evidence of goods that were purchased from the store by Smith

or found in a consensual search of an employee’s car.

The partial suppression of evidence resulted in the dismissal with prejudice

of twenty of the counts against Foote that were based on trafficking in particular

counterfeit trademarks for which all evidence had been suppressed. A jury

convicted Foote of twenty-three of the remaining twenty-four counts, which

involved charges of conspiracy, trafficking in goods for which the evidence was

not suppressed by the district court, and related financial crimes. The district

court then granted Foote’s motion for judgment of acquittal with respect to

twenty-one counts on the ground that the government had failed to present any

evidence that the pertinent registered trademarks were actually in use at the time

Foote trafficked in goods bearing those marks, as required by the Counterfeit

Trademark Act, 18 U.S.C. § 2320(e)(1)(A)(ii). See United States v. Guerra, 293

F.3d 1279, 1290 (11th Cir. 2002). The court found, however, that the government

had produced sufficient evidence that Mont Blanc’s registered trademark was in

use at the time Foote trafficked in the goods. The court therefore upheld the

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jury’s verdict on one count of trafficking in counterfeit goods and one count of

conspiring to traffic in counterfeit goods based on the sale of a single counterfeit

Mont Blanc pen that Smith had purchased from Foote’s store.

At sentencing, the court considered additional evidence from the

government that trademarks other than the Mont Blanc mark were also in use at

the time Foote sold products bearing those marks. Based on this evidence, the

court enhanced Foote’s offense level to reflect the total estimated value of all the

counterfeit goods sold from Foote’s store. See U.S.S.G. § 2B5.3(b)(1) (May 1,

2000). The court sentenced Foote to thirty-seven months of imprisonment, three

years of supervised release, and a fine of more than $104,000. Foote appeals his

convictions and sentence.

III. DISCUSSION

A. The district court’s “likelihood of confusion” instruction

Section 2320 provides criminal penalties for anyone who “intentionally

traffics or attempts to traffic in goods or services and knowingly uses a

counterfeit mark on or in connection with such goods or services.” 18 U.S.C.

§ 2320(a). The statute defines a counterfeit mark as a spurious mark “the use of

which is likely to cause confusion, to cause mistake, or to deceive.” Id.

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§ 2320(e)(1)(A)(iii). 1 Over Foote’s objection, the district court instructed the jury

on the “likely to cause confusion, to cause mistake, or to deceive” test as follows:

Under [this] requirement, it does not matter that the specific persons
who purchased the goods may not have been confused or deceived.
The test is whether defendant’s use of the mark was likely to cause
confusion, mistake or deception to the public in general. In this
regard, you should determine whether an average consumer would be
deceived into believing that the product was made by the genuine
trademark owner.

1
The full definition of “counterfeit mark” is:

(A) a spurious mark—
(I) that is used in connection with trafficking in goods or
services;
(ii) that is identical with, or substantially indistinguishable
from, a mark registered for those goods or services on the
principal register in the United States Patent and Trademark
Office and in use, whether or not the defendant knew such
mark was so registered; and
(iii) the use of which is likely to cause confusion, to cause
mistake, or to deceive; or
(B) a spurious designation that is identical with, or substantially
indistinguishable from, a designation as to which the remedies of the
Lanham Act are made available by reason of section 220506 of title
36;

but such term does not include any mark or designation used in
connection with goods or services of which the manufacturer or
producer was, at the time of the manufacture or production in
question authorized to use the mark or designation for the type of
goods or services so manufactured or produced, by the holder of the
right to use such mark or designation . . . .

18 U.S.C. § 2320(e)(1).

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 Foote argues that this instruction allowed the jury to find him guilty even if

none of his customers were likely to be confused, as long as the jury concluded

that customers might use the goods in a way that would likely cause confusion in

the public in general. He contends that he openly advertised that he sold

counterfeit merchandise and that he informed each customer that his merchandise

was fake. Because his customers were never fooled into thinking they were

purchasing authentic merchandise, Foote argues that the criminal counterfeiting

statute is inapplicable to his conduct. Foote objected to the district court’s

instruction and tendered an alternative instruction stating that “[a]ny use of the

mark by others having only an arms-length relationship to this defendant (i.e.

retail customers) should have no bearing on [the jury’s] deliberations.” The

district court overruled Foote’s objection.

This court reviews the district court’s refusal to give a particular jury

instruction for abuse of discretion. United States v. Voss, 82 F.3d 1521, 1529

(10th Cir. 1996). Whether the jury was properly instructed is a question of law

that this court reviews de novo. Id. The district court’s jury instruction was

based on the law of “post-sale confusion.” See United States v. Torkington, 812

F.2d 1347, 1352 (11th Cir. 1987). Courts that have applied the concept of post-

sale confusion have held that the counterfeiting statute’s “application is not

restricted to instances in which direct purchasers are confused or deceived by the

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counterfeit goods.” United States v. Yamin, 868 F.2d 130, 132 (5th Cir. 1989).

Instead, these courts hold that the statute “is satisfied by a showing that it is

likely that members of the public would be confused, mistaken or deceived should

they encounter the allegedly counterfeit goods in a post-sale context.”

Torkington, 812 F.2d at 1352. In Torkington, the Eleventh Circuit explained:

Like the Lanham Act, the Trademark Counterfeiting Act is not
simply an anti-consumer fraud statute. Rather, a central policy goal
of the Act is to protect trademark holders’ ability to use their marks
to identify themselves to their customers and to link that identity to
their reputations for quality goods and services.
It is essential to the Act’s ability to serve this goal that the
likely to confuse standard be interpreted to include post-sale
confusion. A trademark holder’s ability to use its mark to symbolize
its reputation is harmed when potential purchasers of its goods see
unauthentic goods and identify these goods with the trademark
holder. This harm to trademark holders is no less serious when
potential purchasers encounter these counterfeit goods in a post-sale
context.

Id. at 1352-53 (citations and footnote omitted).

This court has not yet addressed the role of post-sale confusion under the

Counterfeit Trademark Act. The Second, Fifth, Eighth, and Eleventh Circuits,

however, have all concluded that the statute covers post-sale confusion. United

States v. Hon, 904 F.2d 803, 808 (2d Cir. 1990); Yamin, 868 F.2d at 132-33;

United States v. Gantos, 817 F.2d 41, 43 (8th Cir. 1987); Torkington, 812 F.2d at

1352. This court is persuaded by the reasoning of these courts and now joins

them in holding that the “likely to cause confusion, to cause mistake, or to

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deceive” test is not limited to direct purchasers of the counterfeit products.

Instead, the correct test is whether the defendant’s use of the mark was likely to

cause confusion, mistake, or deception in the public in general.

This conclusion is mandated by the plain language of the statute. Even in

the context of post-sale confusion, it is still the defendant’s use of the product in

commerce (i.e., the sale of the counterfeit product) that is likely to cause

confusion, mistake, or deception in the public in general (i.e., when the product

comes into contact with third parties). As the Eleventh Circuit noted in

Torkington, the statutory language is broadly worded, and “[n]othing in the plain

meaning of the section restricts its scope to the use of marks that would be likely

to cause direct purchasers of the goods to be confused, mistaken or deceived.”

Torkington, 812 F.2d at 1351. 2 The court’s instruction to the jury was therefore a

correct statement of the law, and the court did not err in refusing to give Foote’s

proposed alternative instruction. See United States v. Grissom, 44 F.3d 1507,

2
In crafting the language of the Counterfeit Trademark Act, Congress had
available to it language from an earlier version of the civil liability provisions of
the Lanham Act, which required a showing that the infringer’s use be “‘likely to
cause confusion, or to cause mistake, or to deceive purchasers as to the source of
origin of such goods or services.’” Syntex Labs., Inc. v. Norwich Pharmacal Co.,
437 F.2d 566, 568 (2d Cir. 1971) (emphasis added) (quoting 15 U.S.C. § 1114(1)
(amended 1962)). The absence of similar clarifying language in the Counterfeit
Trademark Act is further evidence that the statute covers confusion in the post-
sale context.

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1512 (10th Cir. 1995) (noting that a defendant is not entitled to a jury instruction

that lacks a reasonable legal basis).

B. Trafficking in a single good

Count ten of the indictment charged Foote with “intentionally traffick[ing]

and attempt[ing] to traffic in the following good: Mont Blanc Pen.” (emphasis

added). Foote argues that the language of this count did not state a violation of

§ 2320, which prohibits “intentionally traffic[king] or attempt[ing] to traffic in

goods.” 18 U.S.C. § 2320(a) (emphasis added). The statute’s use of the plural

word “goods,” Foote contends, requires that a defendant traffic in more than one

counterfeit good in order to violate the statute.

The first section of the United States Code provides that “unless the context

indicates otherwise . . . words importing the plural include the singular.”

1 U.S.C. § 1. Under this provision, trafficking in a single counterfeit good

constitutes trafficking in “goods” and is therefore a violation of the Counterfeit

Trademark Act. Nothing in the language or context of the statute mandates a

different result. Contrary to Foote’s assertions, interpreting the statutory

language in this way does not contravene Congress’ intent to limit criminal

penalties to the most egregious cases of trademark infringement. Section 2320 is

still far narrower than the civil liability provisions of the Lanham Act because it

requires proof of criminal intent, and because it proscribes only the use of

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counterfeit marks that are “identical with, or substantially indistinguishable from”

a registered trademark. 18 U.S.C. § 2320(a), (e)(1)(A)(ii); see Hon, 904 F.2d at

805-06 (noting that the Lanham Act covers “reproduction[s],” “cop[ies]” and

“colorable imitation[s]” of registered trademarks in addition to counterfeit

marks). The district court therefore did not err in denying Foote’s motion for

judgment of acquittal on this ground.

C. Statute of limitations

Section 2320 incorporates “[a]ll defenses, affirmative defenses, and

limitations on remedies that would be applicable in an action under the Lanham

Act.” 18 U.S.C. § 2320(c). Although the Lanham Act does not contain an

express limitations period, other circuits have held that claims under the Act are

subject to the statute of limitations of the most analogous state-law cause of

action from the state in which the claim is heard. See, e.g., Gen. Bedding Corp. v.

Echevarria, 947 F.2d 1395, 1397 n.2 (9th Cir. 1991). Foote argues that Kansas’

two-year statute of limitations for unfair competition claims is the most analogous

state-law provision. Kan. Stat. Ann. § 60-513(a)(4). Because a civil trademark

suit under the Lanham Act would have been barred by the Kansas statute of

limitations at the time of his criminal prosecution, Foote argues that the plain

language of § 2320 mandates that his conviction for trafficking in counterfeit

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goods should also have been barred. 3 Foote further contends that the conspiracy

charge should have been precluded because no overt act in furtherance of the

conspiracy was committed during the two-year limitations period. See United

States v. Hauck, 980 F.2d 611, 613 (10th Cir. 1992) (noting that a conspiracy

occurs within a limitations period when an overt act in furtherance of the

conspiracy is committed within that period).

This court has not yet addressed the relevant statute of limitations under the

Lanham Act, and need not do so here. Unlike civil statutes such as the Lanham

Act that are sometimes held to incorporate analogous state-law limitations

periods, criminal provisions without express statutes of limitations are subject to

a catchall limitations period of five years. See 18 U.S.C. § 3282. According to

the criminal catchall provision, the five-year period applies “[e]xcept as otherwise

expressly provided by law.” Id. (emphasis added). There is no such express

statute of limitations in either the Counterfeit Trademark Act or the Lanham Act.

Although some courts have read the Lanham Act to incorporate analogous state

statutes of limitations, these limitations periods arise only by implication and are

not “expressly provided by law.” Courts read implied limitations periods into

statutes only when Congress has failed to specify a contrary statutory period. See

3
The evidence at trial indicated that Foote trafficked in the Mont Blanc pen
on November 22, 1998. The government does not dispute that the prosecution
against Foote was not commenced until more than two years after this date.

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Trs. of the Wyo. Laborers Health & Welfare Plan v. Morgen & Oswood Constr.

Co., 850 F.2d 613, 618 (10th Cir. 1988). In the case of the Counterfeit

Trademark Act, a criminal statute, Congress has provided a specific statutory

period in § 3282.

Because there is no question that Foote’s criminal conduct occurred within

the five-year limitations period, the prosecution in this case was timely.

D. Sufficiency of the evidence

In the district court, Foote moved for a judgment of acquittal because the

prosecution had failed to submit evidence that the relevant trademarks were in use

at the time Foote trafficked in goods bearing those marks. The court granted the

motion as to all counts except for the charges of trafficking in and conspiracy to

traffic in a single counterfeit Mont Blanc pen. As to those counts, the court

concluded that the government had presented sufficient evidence for a jury to

conclude that the Mont Blanc trademark was in use at the time Foote sold a pen

bearing that mark to Richard Smith on November 22, 1998. A district court’s

decision to deny a motion for judgment of acquittal is reviewed de novo. United

States v. McClatchey, 217 F.3d 823, 829 (10th Cir. 2000). Viewing the evidence

in a light most favorable to the government, this court must determine whether a

reasonable jury could have found the defendant guilty beyond a reasonable doubt.

Id.

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 At trial, the government introduced a certified copy of the registration for

the Mont Blanc trademark, which indicated that Mont Blanc began using the mark

on pens in 1913 and registered the mark in 1967. Foote correctly argues that this

evidence standing alone would have been insufficient to demonstrate that the

trademark was in use at the time Foote sold the pen bearing the mark in 1998.

See Guerra, 293 F.3d at 1290. The counterfeiting statute requires not only that

the genuine mark be federally registered, but also that the mark be in actual use at

the time of the defendant’s use of that mark. See 18 U.S.C. § 2320(e)(1)(A)(ii)

(requiring the mark to be “identical with, or substantially indistinguishable from,

a mark registered for those goods or services on the principal register in the

United States Patent and Trademark Office and in use” (emphasis added));

Guerra, 293 F.3d at 1290.

The prosecution presented additional evidence, however, in the form of the

testimony of Joyce Workman, Mont Blanc’s vice-president of customer services.

Workman testified that the company produced writing instruments from “way

back” and that the Mont Blanc trademark “appears on every single Mont Blanc

product that Mont Blanc makes.” When combined with the evidence of trademark

registration and first use, this evidence was sufficient for a jury to reasonably

infer that Mont Blanc had been producing pens continuously since 1913. A jury

could further have reasonably concluded that the trademark appeared on every pen

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the company produced since that time. The district court therefore did not err in

concluding that there was sufficient evidence in support of Foote’s convictions

for trafficking and conspiracy to traffic in counterfeit Mont Blanc pens.

E. Sentencing

1. Guidelines version

In determining Foote’s sentence, the district court applied the version of the

United States Sentencing Guidelines Manual that became effective on May 1,

2000. 4 Foote objected to the court’s use of this version of the Guidelines, arguing

that the November 1998 version instead should instead have been applied.

The Guidelines specify that “[t]he court shall use the Guidelines Manual in

effect on the date that the defendant is sentenced.” U.S.S.G. § 1B1.11(a). There

is an exception to this rule, however, for cases when “the court determines that

use of the Guidelines Manual in effect on the date that the defendant is sentenced

would violate the ex post facto clause of the United States Constitution.” Id.

§ 1B1.11(b)(1). “The Ex Post Facto Clause is violated if the court applies a

guideline to an event occurring before its enactment, and the application of that

4
The May 2000 Guidelines consist of an emergency amendment to the
sentencing provision for criminal infringement of copyright or trademark,
U.S.S.G. § 2B5.3, to be used in conjunction with the remainder of the 1998
Guidelines manual. Other than § 2B5.3, the two versions of the Guidelines are
therefore identical. All references to the Guidelines hereinafter refer to the 1998
version unless specified to the contrary.

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guideline disadvantages the defendant by altering the definition of criminal

conduct or increasing the punishment for the crime.” United States v. Sullivan,

255 F.3d 1256, 1259 (10th Cir. 2001) (quotation omitted). In such a case, the

court is instead required to “use the Guidelines Manual in effect on the date that

the offense of conviction was committed.” U.S.S.G. § 1B1.11(b)(1).

The parties agree that the version of the Guidelines in effect at the time of

sentencing would have resulted in a higher sentence than the Guidelines in effect

at the time Foote’s offense was committed. The district court therefore applied

the May 2000 version of the Guidelines based on its finding that the conspiracy

alleged in count one of the indictment continued until at least May 18, 2000. 5

Foote argued in the district court and maintains on appeal that the conspiracy

actually terminated on December 7, 1998, which was the date when the

government seized all the merchandise from his store. Based on this date, the

5
The Guidelines specify that “[i]f the defendant is convicted of two
offenses, the first committed before, and the second after, a revised edition of the
Guidelines Manual became effective, the revised edition of the Guidelines Manual
is to be applied to both offenses.” U.S.S.G. § 1B1.11(b)(3). This is true “even if
the revised edition results in an increased penalty for the first offense.” Id.
§ 1B1.11, cmt. background. This court in United States v. Sullivan held that this
“one-book rule” does not violate the Ex Post Facto Clause. 255 F.3d 1256, 1261-
63 (10th Cir. 2001). Accordingly, the district court was required to apply the
Guidelines in effect on the last date of any of Foote’s offenses of conviction,
which in this case was the conspiracy offense. The effective date of the offense
of conspiracy is the date when the conspiracy is terminated. United States v.
Stanberry, 963 F.2d 1323, 1327 (10th Cir. 1992).

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November 1998 version of the Guidelines would instead have been the applicable

version, and Foote’s base offense level would have been two levels lower than the

level specified by the May 2000 Guidelines. This court agrees that the conspiracy

terminated in 1998 and that the district court therefore erred in applying the 2000

version of the Guidelines.

The district court’s conclusion that the conspiracy continued until at least

May 18, 2000, was based on its findings by a preponderance of the evidence that

Foote continued selling counterfeit goods even after the FBI seizure in 1998. The

court relied for its finding on the testimony of Brandon Smith, an employee of

Foote’s. Brandon Smith testified that Foote continued to sell items similar to

those seized by the FBI, including products with Nike, Tommy Hilfiger, and

Dooney & Bourke trademarks, until May 18, 2000. The district court had

previously held, however, that there was insufficient evidence presented at trial

on which a jury could conclude that the Nike, Tommy Hilfiger, Dooney &

Bourke, or any other trademarks other than the Mont Blanc mark were in use at

the time Foote trafficked in goods with those marks. See Guerra, 293 F.3d at

1290 (noting that the Counterfeit Trademark Act requires the relevant trademarks

to be in actual use at the time of the defendant’s conduct). Because the

government failed to prove that Foote engaged in illegal trafficking of these

goods, it also necessarily failed to prove that Foote engaged in an illegal

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conspiracy when he conspired to sell them. See United States v. Pinckney, 85

F.3d 4, 8 (2d Cir. 1996) (noting that, in order to establish conspiracy, the

government must prove that the agreed-upon conduct included all elements of the

underlying substantive crime); United States v. Hanson, 41 F.3d 580, 582 (10th

Cir. 1994) (“[T]he essence of any conspiracy is the agreement or confederation to

commit a crime.” (quotation omitted)). A conspiracy to sell goods with

trademarks that are not in use is not a crime. See Guerra, 293 F.3d at 1290.

The only trademark that the government proved was in use at the time of

Foote’s conduct was the Mont Blanc mark, and the only criminal conspiracy for

which Foote could have been convicted was therefore conspiracy to sell products

with counterfeit Mont Blanc trademarks. Both Brandon Smith and Foote denied,

and there was no other evidence presented, that Foote sold any items with the

Mont Blanc trademark after the FBI seized all the goods from his store on

December 7, 1998. The uncontradicted evidence therefore established that the

conspiracy to sell counterfeit Mont Blanc pens terminated on that date. See

Grunewald v. United States, 353 U.S. 391, 397 (1957) (noting that the duration of

a conspiracy is determined by the scope of the conspiracy). 6 To the extent the

6
This is true even though the indictment alleged that the conspiratorial
agreement continued until approximately October 2000, because the conspiracy
alleged in the indictment encompassed Foote’s sale of a whole range of
counterfeit goods for which the government failed to prove the trademarks were
(continued...)

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conspiracy count in the indictment included conspiracy to traffic in other goods,

such a conspiracy was not supported by sufficient evidence.

The government nevertheless argues that the district court’s application of

the 2000 Guidelines was proper because of the court’s finding by a preponderance

of the evidence at sentencing that the other trademarks were in use at the time

Foote trafficked in goods bearing those marks. Even though the district court was

entitled to sentence based on relevant conduct found by a preponderance of the

evidence, however, only the offense of conviction is relevant for purposes of the

Ex Post Facto Clause. U.S.S.G. § 1B1.11, cmt. n.2. The Guidelines specify that:

the last date of the offense of conviction is the controlling date for ex
post facto purposes. For example, if the offense of conviction (i.e.,
the conduct charged in the count of the indictment or information of
which the defendant was convicted) was determined by the court to
have been committed between October 15, 1991 and October 28,
1991, the date of October 28, 1991 is the controlling date for ex post
facto purposes. This is true even if the defendant’s conduct relevant
to the determination of the guideline range under §1B1.3 (Relevant
Conduct) included an act that occurred on November 2, 1991 (after a
revised Guideline Manual took effect).

Id.

6
(...continued)
actually in use. The evidence of trafficking in the Mont Blanc trademark did not
support the existence of a conspiracy past December 7, 1998. Although the
government contends that it needed only to prove an overt act in furtherance of
the conspiracy within the relevant time period, it has not identified for this court
any evidence of an overt act in support of the conspiracy to traffic in products
bearing the Mont Blanc trademark after December 7, 1998.

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 It is clear from the district court’s dismissal of all the substantive

trafficking counts other than the count involving the counterfeit Mont Blanc pen

that Foote’s conspiracy conviction could only have encompassed conspiracy to

traffic in counterfeit Mont Blanc products. The government has therefore failed

to meet its burden of establishing that the conspiracy of conviction continued

beyond the effective date of the May 2000 Guidelines. See United States v.

Harrison, 942 F.2d 751, 760-61 (10th Cir. 1991) (holding that amended

Guidelines could not be used to sentence a defendant on a conspiracy charge

when there was insufficient evidence that the conspiracy continued beyond the

effective date of the amended Guidelines). The district court’s findings of related

counterfeiting activities by a preponderance of the evidence is irrelevant to this

conclusion. See U.S.S.G. § 1B1.11, cmt. n.2.

Because the district court improperly applied the Guidelines, Foote’s

sentence must be reversed and the case remanded for resentencing. See United

States v. Doe, 398 F.3d 1254, 1257 n. 5 (10th Cir. 2005). 7

2. Infringement amount

Although the district court may consider only the offense of conviction for

purposes of selecting the proper version of the Guidelines, it may take into

7
Given this resolution, this court need not address Foote’s contention that
his sentence violates United States v. Blakely, 124 S. Ct. 2531 (2004). See United
States v. Doe, 398 F.3d 1254, 1257 n.5 (10th Cir. 2005).

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account all relevant conduct in determining a sentence pursuant to the applicable

Guidelines version. See U.S.S.G. § 1B1.3(a). The offense level for criminal

counterfeiting under the 1998 version of the Guidelines is based on the retail

value of the infringing goods, which the district court in this case determined to

be the total retail value of all counterfeit items sold by Foote. Id. § 2B5.3(b)(1).

Because an exact record of Foote’s sales was not available, the district court

calculated the retail value of the infringing goods by adding the value of the

counterfeit goods seized by the government to the total value of Foote’s bank

account deposits and cashed checks during the relevant time period. The court

then subtracted Foote’s documented income from legitimate sources and reduced

the resulting value by ten percent to reflect its determination that no more than

that proportion of goods sold at Replicas constituted non-counterfeit merchandise.

Foote disputes the district court’s methodology for calculating the

infringement amount. He argues that the precise language of the Guidelines

requires the court to calculate the infringement based on “the retail value of the

infringing item, multiplied by the number of infringing items” rather than relying

on the total value of bank account transactions. U.S.S.G. § 2B5.3, cmt. n.2(B)

(May 1, 2000). The language cited by Foote, however, does not appear in the

1998 version of the Guidelines. See id. § 2B5.3. The 1998 version, which the

district court should have applied in this case, requires only that the court

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determine “the retail value of the infringing items.” Id. District courts have

“considerable leeway in assessing the retail value of the infringing items,” and

“need only make a reasonable estimate of the loss, given the available

information.” United States v. Slater, 348 F.3d 666, 670 (7th Cir. 2003)

(quotation omitted). The district court’s methodology is reviewed for clear error.

Id. In the absence of more accurate information indicating the retail value of the

counterfeit goods sold by Foote, the court’s decision to include bank account

transactions in its calculation did not constitute clear error.

In the alternative, Foote disputes the district court’s method of calculating

total bank transactions. He contends that the district court erred when it counted

cashed checks toward this total, because the cash obtained from those transactions

could have been deposited in other bank accounts and might therefore have been

double-counted by the court. Foote also argues that the district court erred in

including deposits to a joint bank account in the absence of evidence that he was

the only one responsible for making deposits to that account. Although Foote

raised these issues in the district court, the court did not explicitly address them.

Without the benefit of an explanation of the district court’s reasons for including

these transactions, this court declines to consider Foote’s contentions for the first

time on appeal. See R. Eric Peterson Constr. Co. v. Quintek, Inc. (In re R. Eric.

Peterson Constr. Co.), 951 F.2d 1175, 1182 (10th Cir. 1991) (noting that this

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court generally does not consider issues not ruled on below). On remand, the

district court will have the opportunity to address these issues in the first instance.

3. Criminal fine

Foote next argues that § 2320’s incorporation of “[a]ll defenses, affirmative

defenses, and limitations on remedies that would be applicable in an action under

the Lanham Act” precludes imposition of a criminal fine in circumstances where

damages would not be available as a remedy for civil trademark infringement.

See 18 U.S.C. § 2320(c). Foote contends that civil damages would not be

available in this case because there was no evidence that Mont Blanc gave notice

that its mark was federally registered or that Foote had actual notice of the

registration. See 15 U.S.C. § 1111 (providing that profits and damages are not

available as civil remedies for trademark infringement unless the trademark

registrant gives notice or the defendant has actual knowledge of the federal

registration).

In United States v. Sung, the Seventh Circuit held that “[r]estitution in a

criminal case is the counterpart to damages in civil litigation” and therefore that

restitution could not be imposed in a criminal case where damages would not have

been available under the Lanham Act. 51 F.3d 92, 94 (7th Cir. 1995). Even

assuming that the Seventh Circuit is correct that criminal restitution is analogous

to civil damages, the rationale of Sung would not extend to this case. The court’s

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conclusion in Sung was based on its reasoning that restitution is a form of money

damages payable to the trademark owner. See id. Unlike restitution, fines are a

form of criminal punishment rather than a form of damages, and are payable to

the government rather than to the trademark owner. A criminal fine is therefore

more analogous to other forms of criminal punishment such as imprisonment than

to a civil damages remedy. Because the Lanham Act provides for no limitation on

fines or other forms of criminal punishment, the Counterfeit Trademark Act’s

incorporation of all “limitations on remedies” has no relevance to the imposition

of a criminal fine. 8

Foote also contends that the district court’s imposition of a fine of

$104,107.50 was excessive because it exceeded his ability to pay. The

defendant’s ability to pay is one factor that the district court is required to

consider in setting the amount of a fine. See 18 U.S.C. § 3572(a); U.S.S.G.

§ 5E1.2(d). The government does not identify, and this court’s review of the

record does not reveal, any findings by the district court supporting Foote’s

ability to pay a fine of $104,107.50. District courts are not required to make

specific findings in cases where uncontested evidence establishes the defendant’s

Foote’s argument that the “[a]ll . . . limitations on remedies” language in
8

§ 2320(c) prohibited the district court from imposing a period of supervised
release fails for the same reason. Congress specifically authorized district courts
to impose supervised release in criminal cases, and the Lanham Act provides for
no limitations on this form of criminal punishment. See 18 U.S.C. § 3583(a).

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ability to pay. United States v. Nez, 945 F.2d 341, 343 (10th Cir. 1991). In this

case, however, Foote disputed his ability to pay and presented evidence in support

of his position. The district court on remand should therefore make findings

regarding Foote’s ability to pay and consider these findings in deciding the

amount of the fine to impose.

In addition, the district court erred in delegating the creation of a payment

schedule to the probation office. When a district court provides that a criminal

fine be paid in installments, 18 U.S.C. § 3572 requires the court to specify the

period of time over which the payments must be made. See 18 U.S.C. § 3572(d).

The court has no discretion to delegate this function. United States v. Miller, 77

F.3d 71, 78 (4th Cir. 1996) (holding that the district court may not delegate the

payment schedule for a criminal fine); cf. United States v. Overholt, 307 F.3d

1231, 1255 (10th Cir. 2002) (holding that the district court may not delegate

creation of a restitution payment schedule). On remand, the district court should

provide a schedule for payment of the criminal fine. 9

9
The district court may make use of the probation office for assistance in
developing a payment schedule, as long as it retains and exercises ultimate
responsibility for the decision. United States v. Miller, 77 F.3d 71, 77 (4th Cir.
1996).

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 4. Drug-testing condition

Finally, Foote argues that the district court erroneously thought itself bound

to impose drug testing as a condition of probation. This court agrees that the

district court’s statements at the sentencing hearing appear to indicate that the

court felt it was obligated to impose a drug-testing condition. The statute relied

on by the district court, however, provides that a drug-testing condition “may be

ameliorated or suspended by the court for any individual defendant if the

defendant’s presentence report or other reliable sentencing information indicates a

low risk of future substance abuse by the defendant.” 18 U.S.C. § 3563(a)(5).

On remand, the district court should therefore consider whether to ameliorate or

suspend the drug testing condition pursuant to its discretionary authority under 18

U.S.C. § 3563(a)(5).

IV. CONCLUSION

For the foregoing reasons, Foote’s convictions are AFFIRMED. The case

is REMANDED to the district court with instructions to vacate Foote’s sentence

and resentence him in accordance with this opinion. Foote’s motion to

supplement the record on appeal with the counterfeit Mont Blanc pen is

DENIED.

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