Annette L. Hurst

Intellectual Property

Ms. Annette L. Hurst, a partner in the San Francisco office, is a member of the Intellectual Property Group.

Ms. Hurst is an experienced trial lawyer who has tried patent, copyright, trade secret, trademark and business tort claims. Ms. Hurst was named “Litigator of the Week” by The American Lawyer for her work as co-lead counsel on the Mattel/MGA case. Every year since 2010, Ms. Hurst has been named one of the top 75 IP litigators in California by The Daily Journal. In January 2013, Ms. Hurst was named “Female Litigator of the Year West” by Benchmark Litigation.

Ms. Hurst’s recent notable engagements include the following.

  • Kirtsaeng v. Wiley & Sons (U.S.). Ms. 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.
  • Fox Networks v. DISH (C.D.Cal.). Ms. Hurst successfully defended against Fox’s motion for preliminary injunction aiming to shut down the award-winning Hopper DVR and its PrimeTime Anytime and AutoHop features.
  • Brocade Networks v. A10 (C.D.Cal.). Ms. Hurst second-chaired the trial team that secured a US$112M jury verdict in August 2012 in this patent, copyright, trade secret and business torts case.
  • MGA v. Mattel (C.D. Cal.). Ms. Hurst led the team that made a successful turnaround of this copyright, trademark, trade secret and business torts case resulting in an affirmative judgment of US$309 million against Mattel in 2011.
  • Oracle v. Google (Fed. Cir.). Ms. Hurst is on the brief for Oracle on this high stakes copyright appeal.
  • SLB Toys USA, Inc., v. Wham-O (C.D. Cal.). Ms. Hurst 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.). Ms. Hurst obtained a great settlement for Ariba after two weeks of jury trial in this software patent infringement case.

Other notable representations include the following.

  • Sky v. Microsoft. Ms. Hurst represented Microsoft in a successfully settled patent infringement matter.
  • Office Live LLC v. Microsoft. Ms. Hurst represented Microsoft in a successfully settled trademark infringement matter.
  • Laureate Education, Inc., v. Teachscape. Ms. Hurst represented the Laureate Education and Canter & Associates in dual actions alleging copyright infringement and trade secrets misappropriation in the online distance-learning field.
  • Gymboree. Ms. Hurst represented Gymboree and Gym-Mark, Inc. in copyright infringement actions brought against Babies ‘R’ Us, Mervyn’s and Children’s Apparel Network.
  • VEW Ltd. Ms. Hurst represented 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. MGA Entertainment, 616 F.3d 904 (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).

Ms. Hurst’s community and professional activities include her current service as the President of the Lafayette Elementary School PTA, past membership on the Board of Directors of the Volunteer Legal Services Program and 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.

Annette Hurst
  • “Copyright Protection in the Digital Television Age,” USC IP Institute, March 14, 2013.
  • Ethics & E-Discovery, January 18, 2012.
  • “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.
Select 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.
Admitted In
  • California
Court Admissions
Supreme Court of the United States
    United States District Court
    • Central District of California
    • Eastern District of California
    • Southern District of California
    • Northern District of California
    • District of Colorado
    United States Courts of Appeals
    • First Circuit
    • Second Circuit
    • Third Circuit
    • Ninth Circuit

    • J.D., New York University School of Law, 1990
    • B.A., magna cum laude, Philosophy, Miami University, 1987
    • B.S., magna cum laude, Beta Gamma Sigma, Business Administration, Miami University, 1987
    • Litigation and Intellectual Property Sections, ABA
    • AIPLA
    • IP Inns of Court

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