Annette L. Hurst

Annette L. Hurst, a partner in Orrick's San Francisco office, is a member of the Intellectual Property Group. Her practice focuses on intellectual property litigation, particularly copyright, trademark and trade secrets litigation, as well as patent litigation and disputes involving complex commercial transactions in the software and Internet industries. She also counsels clients in the high technology, Internet and entertainment industries regarding a variety of intellectual property issues, including product and marketing development for dual-use technologies, as well as IP-driven issues in major corporate and material licensing transactions. In 2009 and 2010, Ms. Hurst was named one of the top 75 IP litigators in California by The Daily Journal.

Ms. Hurst's most recent trials include the following.

• SLB Toys USA, Inc. v. Wham-O (C.D. Cal.):  Obtained a US$6 million jury verdict for counter-claimant Wham-O on trademark infringement, dilution and false advertising claims, with enhancement for willful infringement and an additional US$1.7 million attorneys' fee award.
• Sky Technologies v. Ariba. (D. Mass.):  Two weeks of trial before Judge Young in this software patent infringement case resulted in a successful settlement for Ariba of this and a companion action filed by Sky against Procuri in the Eastern District of Texas.

Other notable recent representations include the following.

• Office Live LLC v. Microsoft: Representation of Microsoft in this successfully settled trademark infringement matter.
• Laureate Education, Inc. v. Teachscape: Representation of Laureate Education and Canter & Associates in dual actions alleging copyright infringement and trade secrets misappropriation in the online distance-learning field.
• Gymboree:  Representation of Gymboree and Gym-Mark, Inc. in copyright infringement actions brought against Babies 'R' Us, Mervyn's and Children's Apparel Network.
• VEW Ltd.:  Representation of Vera Wang's licensing entity in a trademark dispute concerning the mark SIMPLY VERA.

Ms. Hurst's published appellate decisions include the following.

• Mattel v. Walking Mtn. Prods., 353 F.3d 792 (9th Cir. 2003) (argued for appellee and cross-appellant) (successful affirmance of summary judgment of fair use of copyright and trademark; successful reversal on cross-appeal from denial of attorneys' fee award).
• DVD Copy Control Ass'n, Inc. v. Bunner, 31 CAl.4th 864 (2003) (brief amicus curiae of IEEE-USA).
• Sony v. Connectix, 203 F.3d 596 (9th Cir. 2000) (brief amicus curiae of IEEE-USA).
• Catchpole v. Brannon, 36 Cal.App.4th 237 (1995) (argued for appellant) (successful reversal of defense verdict in sexual harassment case on the ground of gender bias of the trial judge).

Ms. Hurst's community and professional activities include past membership on the Board of Directors of the Bar Association of San Francisco for which she was chair of the Finance and Investments Committee. She also is a past member of the Board of Directors of the Legal Aid Society of San Francisco and the Board of Governors of the Association of Business Trial Lawyers, Northern California Chapter, as well as a past president of the Barristers Club.

Admitted in

• California

Court Admissions

• Central District of California
• Eastern District of California
• Southern District of California
• Northern District of California
• District of Colorado

• First Circuit
• Second Circuit
• Third Circuit
• Ninth Circuit

Memberships

• Litigation and Intellectual Property Sections, ABA
• AIPLA
• IP Inns of Court

Multimedia

Publications

• Author, “California District Court holds user-generated content services are eligible for protection under the safe harbor provisions of the DMCA,” Orrick Client Alert, January 8, 2009.
• Co-Author, “Federal Circuit Clamps Down on East Texas Forum Shopping in Patent Cases,” Orrick Client Alert, December 29, 2008.
• "Grokster Deconstructed: The Ruling Offers Little Predictability – Other than for More Litigation," Intellectual Property and Technology Law for the Pacific Rim, October 24, 2005.
• "WhenU Ruling Goes to Legal Extreme – Court Loses Sight of Consumer Protection Function of Lanham Act," San Francisco Daily Journal, September 27, 2005.

Speeches & Programs

• "Keyword Advertising and Trademark Infringement, Strategies for Protecting Brands and Avoiding Liability in Online Advertising," Strafford Legal Teleconferences, March 12, 2009.
• "Whose Home Run is it Anyway," ABA IP/Antitrust Section Teleseminar, February 19, 2009.
• "Real Lawyers, Real Cases," McCarthy Institute Seminar on Fair Use, University of San Francisco, November 1, 2008.
• "Virtual Property in the Real World," Gamer Technology Law Conference, March 16-17, 2006.
• "Does the offering/use of Internet keywords constitute direct and/or secondary trademark infringement?," ABA IP Law Conference, June 23, 2005.
• “Copyright Law: Basics and Hot Topics,” Xerox PARC Forum, October 24, 2002.