Annette Hurst

Annette L. Hurst, a partner in the San Francisco Office and Intellectual Property trial lawyer, is the firm’s Worldwide Tech Sector Leader and also coordinates its interdisciplinary Artificial Intelligence practice.

• Incarichi

  Annette’s recent notable engagements include the following:

  • hiQ Labs, Inc. v. Linkedin Corporation (N.D. Cal.). Annette is lead trial counsel for LinkedIn in this data scraping case against hiQ Labs. hiQ filed suit, claiming that LinkedIn’s conduct was unfair; that hiQ has a free-speech right under the California Constitution to access the information; and seeking a declaration that LinkedIn doesn’t have a claim against it under the Computer Fraud and Abuse Act. We were asked to advise the original trial team that was representing LinkedIn. When the district court issued a preliminary injunction against LinkedIn, we were asked to provide advice on appellate strategy, and Annette continued to advise LinkedIn regarding district court strategy.
    
  • Williams-Sonoma, Inc. v. Amazon, Inc. (N.D. Cal.). Annette is lead counsel in this design patent and trademark infringement case brought by specialty retailer WSI against Amazon. In a widely reported ruling, WSI’s trademark claims challenging Amazon’s business practices were approved by the Court to proceed when it denied Amazon’s motion to dismiss.
  • Humu v. Hulu (N.D. Cal.). Annette is lead counsel for Humu in seeking a declaration that it does not infringe Hulu’s trademark.
  • Oracle v. Google (N.D. Cal.). Annette is a key part of the Orrick trial team representing Oracle in its ongoing copyright case against Google, and was successful in leading a multi-billion dollar damages claim past Daubert scrutiny.
  • Amarin Pharma, Inc. v. ITC (ITC, Fed. Cir.). Annette led the Orrick team representing Pharmavite and DSM in this false advertising challenge by pharmaceutical manufacturer Amarin, a leader in the fish oil supplement industry. After Annette crafted an aggressive strategy that resulted in a rare order by the ITC refusing to institute an investigation, Orrick partner Mark Davies successfully defended that result on appeal at the Federal Circuit.
  • Quest Software, Inc. v. Nike, Inc. (D. Or.). Annette is lead counsel in this software copyright infringement case alleging that one of the nation’s largest retail companies engaged in widespread unauthorized installation and use of Quest’s software in running its business.
  • Hill-Rom, Inc. v. Tellisense et al. (S.D. Ind.). Annette leads the Orrick team representing the Helvetia Defendants in this suit alleging trade secret misappropriation and related business torts arising from technology developed for the incontinence detection market. 
  • AARC v. DENSO Int’l Am., Inc. et al. (D.D.C.). Annette leads the Orrick team representing infotainment system supplier DENSO in this Audio Home Recording Act challenge to in-dash devices brought by the music industry.
  • Fox Networks v. DISH (C.D.Cal.). After beating back two preliminary injunction motions, Annette successfully argued summary judgment on copyright claims brought by Fox against the award-winning Hopper DVR and its Sling, PrimeTime Anytime and AutoHop features.
  • Kirtsaeng v. Wiley & Sons (U.S.). Annette Hurst served as co-counsel and architect of the copyright strategy used to secure a 6-3 vote in favor of Orrick client Supap Kirtsaeng. The Court held that the doctrine of first sale under U.S. copyright law, which allows for legally acquired copyrighted works to be resold by their owners, applies to works made overseas. This ruling has broad implications for an estimated US$60 billion in copyrighted goods manufactured abroad.
  • Brocade Networks v. A10 (C.D.Cal.). Annette second-chaired the trial team that secured a $112M jury verdict in August 2012 in this patent, copyright, trade secret and business torts case.
  • MGA v. Mattel (C.D. Cal.). Annette led the team that made a successful turnaround of this copyright, trademark, trade secret and business torts case resulting in an affirmative judgment of $309 million against Mattel in 2011 and the largest ever award of fees to a defendant in copyright litigation.
  • SLB Toys USA, Inc., v. Wham-O (C.D. Cal.). Annette obtained a $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 $1.7 million attorneys’ fee award.
  • Sky Technologies v. Ariba (D. Mass.). Annette obtained a great settlement for Ariba after two weeks of jury trial in this software patent infringement case.

  Annette's published decisions include the following:

  • Kirtsaeng v. John Wiley & Sons, Inc., 133 S.Ct. 1351 (2013) (on the brief)
  • Oracle America, Inc. v. Google, Inc., 886 F.3d 1179 (Fed. Cir. 2018) (on the brief)
  • Oracle America, Inc. v. Google, Inc., 750 F.3d 1339 (Fed. Cir. 2014) (on the brief)
  • Fox Broadcasting Co. v. Dish Network LLC, 747 F.3d 1060 (9th Cir. 2013) (on the brief)
  • Fox Broadcasting Co. v. Dish Network LLC, 905 F. Supp. 2d 1099 (C.D. Cal. 2012) (argued)
  • Mattel v. MGA Entertainment, 616 F.3d 904 (9th Cir. 2010) (successful reversal of injunction against MGA) (on the brief).
  • 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).

  Other notable representations include the following:

  • Pharmavite v. Del Monte Fresh Produce, Annette represented Pharmavite in protecting its flagship brand NATURE MADE in a successfully settled trademark infringement case against Fresh Del Monte.
  • Sky v. Microsoft. Annette represented Microsoft in a successfully settled patent infringement matter.
  • Office Live LLC v. Microsoft. Annette represented Microsoft in a successfully settled trademark infringement matter.
  • Laureate Education, Inc., v. Teachscape. Annette represented the Laureate Education and Canter & Associates in dual actions alleging copyright infringement and trade secrets misappropriation in the online distance-learning field.
  • Gymboree. Annette represented Gymboree and Gym-Mark, Inc. in copyright infringement actions brought against Babies ‘R’ Us, Mervyn’s and Children’s Apparel Network.
  • VEW Ltd. Annette represented Vera Wang’s licensing entity in a trademark dispute concerning the mark SIMPLY VERA.