Bayerische Motoren Werke AG v. Zync Inc. — Federal Judge Blocks ITC Trade Secret Proceeding to Enforce Forum Selection Clause

Background

BMW and Zync Inc. had a Pilot Project Agreement governing the development of in-vehicle infotainment technology. The agreement included a non-disclosure agreement (NDA) with a forum selection clause designating Munich, Germany as the exclusive place of jurisdiction for all disputes. Zync alleged BMW misappropriated its trade secrets in the infotainment technology. In April 2025, Zync filed a trade secret misappropriation suit in California state court. That suit was dismissed on May 12, 2026, after BMW successfully argued enforcement of the NDA’s forum selection clause. Before the dismissal, Zync had also filed a complaint with the International Trade Commission (ITC) in February 2026, asserting the same trade secret misappropriation theory.

BMW then filed this action in the Northern District of California specifically to enforce the forum selection clause against Zync’s pending ITC proceeding. BMW argued that Zync’s use of the ITC as an alternative forum to pursue the same dispute was a breach of the parties’ contractual bargain. BMW sought a temporary restraining order (TRO) to halt Zync’s participation in the ITC action while the court could hold a preliminary injunction hearing.

The Court’s Holding

Judge Breyer granted the TRO, finding all four Winter factors satisfied.

Likelihood of success on the merits: BMW demonstrated it was likely to succeed in enforcing the NDA’s forum selection clause. The clause designated Munich as the exclusive jurisdiction for disputes, and the ITC complaint covered the same trade secret allegations as the dismissed California state court action. Courts routinely enforce exclusive forum selection clauses to prevent parties from using alternative forums to end-run a contractual choice-of-forum provision.

Irreparable harm: BMW would suffer irreparable harm if Zync were allowed to continue the ITC proceeding. Forum selection clauses are negotiated contractual protections, and their value is destroyed if a party can simply proceed in an alternative forum while enforcement litigation is pending. The harm from being deprived of the benefit of the contractual forum is not compensable in damages after the fact.

Balance of equities and public interest: Both factors favored BMW. Zync entered the forum selection clause voluntarily and could pursue its claims in Munich. Enforcement of private commercial agreements reflects sound public policy.

The TRO enjoined Zync from participating in the ITC trade secret action for 14 days. Bond was set at $1,000. A preliminary injunction hearing was set for June 22, 2026.

Key Takeaways

• Forum selection clauses can reach ITC proceedings. This ruling suggests that a contractual exclusive-forum clause designating a foreign court can be enforced to block a U.S. ITC trade secret investigation when the ITC action arises from the same facts covered by the clause. The ITC’s statutory jurisdiction does not automatically override contractual forum agreements.
• Persistent forum shopping invites TROs. Zync lost on forum grounds in California state court, then pursued the same claim before the ITC. The court’s willingness to issue a TRO reflects judicial skepticism toward repeated forum selection in the face of a clear contractual provision.
• Forum clauses have strategic value beyond litigation. Companies licensing or co-developing technology should carefully evaluate forum selection clauses not just for ordinary civil disputes but for regulatory/agency proceedings (ITC, USITC) that may arise from the same technology relationship.

Why It Matters

Trade secret disputes over technology developed under NDAs increasingly play out at the ITC, which can issue exclusion orders blocking imports without proving damages and on a faster timeline than district court litigation. This ruling raises the question of whether a foreign forum selection clause—here, designating German courts—can effectively block ITC access. If the preliminary injunction is granted, it would mark a significant limitation on a licensor’s ability to use the ITC as a litigation weapon when a co-development agreement specifies another forum. The hearing on June 22 will be closely watched by technology licensing practitioners.