Design Mark Industries, LLC v. Unbeaten Path International, Ltd.

CourtDistrict Court, D. Massachusetts
DecidedMarch 26, 2025
Docket1:24-cv-11850
StatusUnknown

This text of Design Mark Industries, LLC v. Unbeaten Path International, Ltd. (Design Mark Industries, LLC v. Unbeaten Path International, Ltd.) is published on Counsel Stack Legal Research, covering District Court, D. Massachusetts primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Design Mark Industries, LLC v. Unbeaten Path International, Ltd., (D. Mass. 2025).

Opinion

UNITED STATES DISTRICT COURT DISTRICT OF MASSACHUSETTS

DESIGN MARK INDUSTRIES, LLC, * * Plaintiff, * * v. * Civil Action No. 1:24-cv-11850-IT * UNBEATEN PATH INTERNATIONAL, * LTD. and MILTON C. HABECK, * * Defendants.

MEMORANDUM & ORDER

March 26, 2025 TALWANI, D.J. In this action, Plaintiff Design Mark Industries, LLC (“Design Mark”) alleges unfair and deceptive trade practices in violation of M.G.L. c. 93A and fraud and deceit by Defendants Unbeaten Path International, Ltd. (“Unbeaten Path”) and Milton C. Habeck. Design Mark claims further that terms of certain contracts between Design Mark and Unbeaten Path are unconscionable. Design Mark seeks damages and a declaratory judgment that certain provisions of those contracts are void and unenforceable. Compl. [Doc. No. 1]. Now pending before the court are Plaintiff’s Motion for Preliminary Injunction [Doc. No. 8] seeking to enjoin Unbeaten Path from arbitrating a dispute regarding fees and penalties that Unbeaten Path contends are due and Defendants’ Motion to Dismiss the Complaint Pursuant to Fed. R. Civ. P. 12(b)(1) or, in the Alternative, to Compel Arbitration [Doc. No. 29]. For the following reasons, Defendants’ Motion [Doc. No. 29] is DENIED as to the request to dismiss the action for lack of subject matter jurisdiction and GRANTED as to the request to compel arbitration of Plaintiff’s claims, and Plaintiff’s Motion [Doc. No. 8] seeking preliminary relief is DENIED. I. Background A. Facts Alleged in the Complaint Design Mark is a Massachusetts LLC that manufactures custom electronics. Compl. ¶ 7 [Doc. No. 1]. Unbeaten Path is a Wisconsin IT services and consulting company. Id. at ¶ 8. Defendant Milton Habeck, a resident of Wisconsin, is Unbeaten Path’s President and managing partner. Id. at ¶ 9. Craig Ingemi is Design Mark’s Director of Information Technology. Id. at ¶ 13. On December 19, 2019, Ingemi signed a software licensing agreement (“SLA”) on behalf of Design Mark and Habeck signed the SLA on behalf of Unbeaten Path. Id. at ¶¶ 18–19. In 2021, Ingemi and Habeck began discussions regarding the use of Unbeaten Path’s IT services

and programs. Id. at ¶ 25. Habeck sent Ingemi an Engagement Agreement (“EA”) and a Professional Service Agreement (“PSA”). Id. at ¶¶ 26–28. Ingemni asked Habeck which of these two agreements was necessary to establish an agreement for “support only when needed,” and Habeck responded that both agreements were necessary. Id. at ¶ 29. Ingemi signed both documents for Design Mark on April 1, 2021. Compl. Ex. C [Doc. No. 1-5]; Compl. Ex. D [Doc. No. 1-6]. On July 8, 2021, Ingemi emailed Habeck a question regarding the software licensed under the SLA. Compl. ¶ 42 [Doc. No. 1]; Compl. Ex. G [Doc. No. 1-9]. On or about July 14, 2021, Habeck sent an invoice for $307.25 for reviewing and answering questions related to Ingemi’s July 8 email. Id. at ¶¶ 43–44; Compl. Ex. I [Doc. No. 1-12]. Ingemi disputed the charge

as unreasonable but forwarded the invoice to Design Mark’s accounting staff for payment in full. Compl. ¶ 44 [Doc. No. 1]. However, Design Mark’s accounting team lost track of the invoice. Id. On or about October 20, 2021, Habeck sent an invoice for $10.45 as a penalty for nonpayment of the July 14 invoice. Id. at ¶ 45. The penalty invoice was due on November 19, 2021, but paid on November 23, 2021. Id. at ¶¶ 45, 47. Habeck recorded the payment as received on December 6, 2021. Habeck also invoiced Design Mark $2,610 for “Software Maintenance” on January 3, 2022. Id. at ¶ 48. Design Mark paid this invoice on March 3, 2022, despite never receiving these services. Id. Design Mark discovered the unpaid July 14, 2021 invoice and paid it on April 21, 2022. Id. at ¶ 49. Habeck recorded that payment as received on April 26, 2022. Id.

Habeck invoiced Design Mark for compounded $750 Payment Negligence Penalty (“PNP”) fees based on the two original invoices. Id. at ¶ 50. Habeck also continued to invoice Design Mark for PNP and penalty interest fees based on penalties that Design Mark had not paid. Id. at ¶ 51. On December 7, 2022, Habeck sent another invoice with a spreadsheet that acknowledged Design Mark’s payment in full for the two invoices originally at issue. Id. at ¶ 54; Compl. Ex. P [Doc. No. 1-19]. The billing, including accelerated penalty fees, continued through Design Mark’s filing of this action. Compl. ¶¶ 55, 57 [Doc. No. 1]. On March 7, 2024, Habeck acknowledged in an email that, according to his records, the

amount Design Mark owed under the SLA was $3,219, and that the remaining invoices, which exceeded $400,000, were for penalty fees that were being compounded. Id. at ¶ 65; Compl. Ex. U [Doc. No. 1-24]. At the time the Complaint was filed, Defendants claimed that Design Mark owed fees totaling $412,443.21. Compl. Ex. Q [Doc. No. 1-20]. B. The Contracts at Issue The SLA includes a provision prescribing mediation and arbitration as “the sole remedy for any controversy/claim arising out of this SLA” and explaining that such proceedings would be conducted by the Institute of Christian Conciliation under the “Rules of Procedure for Christian Conciliation.” Compl. Ex. A [Doc. No. 1-3]. The EA states that it was a “subsidiary to the Professional Services Agreement.” Compl. Ex. C [Doc. No. 1-5]. The PSA set forth the terms and conditions under which Unbeaten Path would provide deliverables to Design Mark. Compl. Ex. D [Doc. No. 1-6]. In particular, the PSA stated that payments not made within thirty days after the invoice date would be overdue and

“subject to a finance charge of 1.5% per month.” Id. Further, any payment received more than 61 calendar days after its due date would be subject to a $750 “Payment Negligence Penalty.” Id. The PSA also included a provision for “resolving issues” which provides: Any and all claims/disputes related in any way to this PSA shall be mediated under the “Rules of Procedure for Christian Conciliation” . . . . Any controversy which cannot be settled by such mediation will be settled by arbitration in accordance with Institute of Christian Conciliation (ICC) Rules. Arbitration decisions reached under these Rules shall be considered final and not subject to appeal. The ICC shall nominate mediators and/or arbitrators. The parties agree that the mediation/arbitration methods described by the ICC Rules shall be the sole remedy for any controversy/claim arising out of this PSA. Each party expressly waives its right to file/introduce any motion or action against the other party in any civil court or any other civil jurisdiction for any reason, and promises not to do so, except to enforce an arbitration decision. The party that first breaches the promise in the preceding sentence will pay the other party a penalty of US$55,000; motions for dismissal of civil cases will not be viewed as a breach of this PSA. The prevailing party in any ICC arbitration case shall be entitled to collect these case-associated amounts from the other party: i) attorney fees, ii) out-of-pocket costs/travel expenses, iii) a US$10,000 penalty for employee time devoted to preparing filing(s) and attending hearing(s), plus iv) 1.5% per month interest on awarded values. This PSA and any related EAs shall be governed solely and exclusively by the principles written in the Holy Bible. Id. C. The Filing of this Action and Further Developments Design Mark filed this action on July 18, 2024. Compl. [Doc. No. 1]. On July 23, 2024, an ICC case administrator issued a “summary of preliminary notice and communication documents” stating that Habeck had requested to initiate arbitration with Design Mark on March 30, 2024, and that Design Mark had notified the ICC that it would not be participating in the mediation and arbitration process. Mot. for Preliminary Injunction Ex. 6 CM/ECF pp. 49–51 [Doc. No. 8-1].

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Design Mark Industries, LLC v. Unbeaten Path International, Ltd., Counsel Stack Legal Research, https://law.counselstack.com/opinion/design-mark-industries-llc-v-unbeaten-path-international-ltd-mad-2025.