Annette Hurst: Defending Your Right to Skip Ads
How she got a judge to reject broadcasters’ demands for an injunction against DISH Network
Published in 2015 Northern California Super Lawyers magazine
By Joe Mullich on June 29, 2015
The cross-examination was about as slam-dunk as these things get.
Annette Hurst, a partner at Orrick, Herrington & Sutcliffe, had just learned the witness she was about to confront had erased a massive amount of documents he’d been ordered to turn over to the court.
But in the complex world of intellectual property and copyright litigation, even a slam-dunk needs to be approached gingerly. Hurst’s team was representing tech giant Brocade Communications Systems Inc. in a patent, copyright, business torts and trade secret dispute against A10 Networks. A special master had been appointed for electronic discovery, but he was weeks behind, and the judge allowed Hurst’s forensic expert to go through an A10 executive’s digital files just days before his cross. That’s when her team discovered relevant documents had been destroyed.
“I was blown away, but it was tricky because the jury had no context for any of this, such as not even knowing there was a special master,” Hurst says. “This happened so late in the cross, I didn’t have my own expert witness, so I had to get the witness himself to lay out the foundation of what had happened in a clear way, and force him to admit he had lied under oath in order to conceal that he destroyed evidence.”
Hurst says that, when he tried to recant the next day, she asked, “Are you lying now or were you lying then?” The result? A $112 million verdict in Brocade’s favor in August 2012. In post-trial motions, the patent damages portion was declared uncertain, and A10 was granted a new trial on the patent damages, leaving the $60 million copyright verdict intact. A settlement was reached just before the new trial in May 2013, with A10 agreeing to pay a total of $75 million and granting Brocade a license to all its patents, including any A10 might receive in the next 12 years.
Over the past quarter-century, Hurst has made a career of groundbreaking moments that have redefined copyright and intellectual property law. She’s forged a reputation for a style that is direct yet steeped in complex strategy for cases involving some of the world’s most famous brand names. Think Wham-O, Nintendo, Gymboree, Microsoft, Barbie.
“She’s among the handful of the very best in the trade,” says Mark Flagel, a retired Latham & Watkins partner who opposed her in the Brocade case. “She has a unique sixth sense of how to go for the jugular in a cross-examination in a very transparent way and make sure the judge is getting the essential facts. Every time we knew Annette was going to be doing the cross-examination, the tension in the room went up.”
One of Hurst’s favorite words is “framing.” Whether it’s making a pitch to a jury or to the members of her kids’ PTA, it’s all about the context.
Hurst created a CLE slide show in which she presents the facts of IP and copyright cases and asks the audience to guess the ruling. Everyone’s batting average is low because extremely similar cases can have dramatically different outcomes. “I like copyright because it presents the opportunity to use excellent lawyering to influence the outcome, more so than many other areas of law,” she says. “So many doctrines in copyright are unpredictable.”
A few years ago, Josh Rosenkranz, who heads Orrick‘s Supreme Court and appellate litigation practice, approached her about a case he was certain the justices would take—Kirtsaeng v. John Wiley & Sons Inc.
The publisher had filed a federal suit against Thailand native Supap Kirtsaeng in 2008 for a clever bit of arbitrage. Kirtsaeng noticed Wiley textbooks were much cheaper in his homeland than in the United States, so he imported foreign-edition textbooks into the United States.
This was not a new issue for the nation’s highest court. Just two terms before, the justices had split 4-4 on the issue of so-called gray-market goods in a case known as Costco Wholesale Corp. v. Omega S.A.
Hurst dreamed up a fresh textual interpretation of the Copyright Act, arguing that, once a physical copy of a copyrighted work is made and sold outside the U.S. with the copyright owner’s permission, the copy may be resold in the U.S. without infringing the owner’s copyright.
“We were willing to slog through 100 years of legislative debate and case law,” she says. “It was a combination of guts and really hard work that resulted in a fresh approach that really clicked. The justices asked a lot of questions about the historical aspects.”
It was all about the framing, and the judges voted 6-3 in her favor in 2013—forging an unusual coalition of conservative and liberal justices that had never happened in a copyright case. “We adopted an analytic framework somewhat conservative to reach an outcome that was in many ways liberal,” Hurst says.
It was inspirational for her to see three women on the Supreme Court.
“If you go all the way back to my degree in business administration, one of the things that I studied was organizational behavior,” she says. “There is a fair amount of social-scientific research that suggests that it takes three women in an institution to really have effect on outcomes. I don’t want to suggest that Justice Ginsberg wasn’t being heard before Justice Sotomayor and Justice Kagan came along, but just knowing about that made me feel that we had really gotten to the point where women’s voices were making a difference.”
Hurst has wanted to be a lawyer since age 6. She was also drawn to technology and started in the systems-analysis program at Miami University as an undergrad, then veered course. “I was like a lot of women who got off the path of STEM [science, technology, engineering, math],” she says. “I had a great technical facility, but I quickly found myself in an unfamiliar culture.”
She switched to a dual major of business administration and philosophy, which included feminist thought. “Feminism has gotten a bad name,” she says, “but it comes from a fundamental sense of fairness.”
Hurst continued on to law school as planned, though she wishes she had also completed the formal technology background, from a marketing perspective, given the kinds of cases she handles. She graduated from New York University School of Law in 1990, then joined Howard Rice Nemerovski Canady Falk & Rabkin, where she immediately sank her teeth into the emerging role of technology in copyright law.
Her first 18 months were spent helping to represent the maker of Game Genie, a device that provided a way to adapt the Nintendo Entertainment System. Players could modify video games by entering codes to, for instance, make their characters invincible. Nintendo didn’t like the idea of players tinkering with its games.
The case, Nintendo of America Inc. v. Lewis Galoob Toys Inc., appealed to Hurst because it involved every great disputed doctrine of copyright law and was at the intersection of technology and copyright. Plus, she’s a big gamer herself.
During a two-week bench trial, Hurst says, she conducted one of her earliest depositions on a Sunday evening with a surprise Nintendo witness, but her partners felt it would be unfair to the client to have a first-year associate cross-examine a witness in a major trial. Hurst understood but was disappointed.
Then an odd thing happened. On the following Monday, Judge Fern M. Smith asked the two Howard Rice partners who were heading the case, “When is Ms. Hurst going to get to do something?” The next day, she was allowed to perform her first-ever cross-examination and succeeded in getting the entire testimony stricken from the record, beginning a long string of successful cross-examinations throughout her career.
The case of which Hurst is most proud was Mattel Inc. v. Walking Mountain Productions in 2003. Her client, a Utah artist, had produced a series of photographs titled Food Chain Barbie, in which he posed nude Barbie dolls in danger of being attacked by vintage kitchen appliances. “For a feminist like me, the opportunity to vindicate criticism of Barbie was hard to pass up,” Hurst says.
She brought an expert witness, the author of a book about the history of Barbie, “framing” her client’s photographs as commentary about a cultural icon. “We got a fee award in the case, and that sent a message to Mattel they had to back off some of their overzealous protection of Barbie and leave room for commentary,” she says.
Hurst has a distinctive voice—clear and loud and always seeming on the verge of an ironic observation. She delights in pointing out all the tchotchkes in her office, including her favorite, the Five-Moon Salute, a photograph of five dolls sticking their bare butts into the air, a memento from the Walking Mountain case.
Flagel talks about how Hurst uses her voice in the courtroom. “It’s natural and doesn’t seem forced,” he says, “but she makes it clear when you should be paying attention. She can articulate questions in a way that simplifies the matter and draws just the point she wants to make, which is very hard to do, especially in complex cases.”
Hurst thinks of her style as straightforward. “What I project, more than anything, is authenticity to judge and jury,” she says. “What you see is what you get. I am not a big actor or poser who uses different approaches for different things. I start with what I believe is right and work out from there to craft an argument. I call it like I see it.”
Lawrence R. Katzin, vice president and associate general counsel for Dish Network Corp., agrees with Hurst’s self-description. “She makes her point with force, but does it with her authenticity rather than by pounding on the table,” he says, “because she’s so knowledgeable.”
Hurst represented Dish in litigation against the four major broadcast networks, which contended Dish’s ad-skipping DVR infringed their copyrighted programming. Hurst says the case was the easiest she’d ever had to explain to laypeople: She was defending their right to watch television without commercials.
In July 2013, the 9th Circuit sided with Dish and the lower district court in rejecting demands for a preliminary injunction in Dish’s battle with Fox Broadcasting Co. “She convinced the judge, and rightfully so, the other side was misreading the law,” Katzin says. “We had some novel issues of laws that pushed up against the boundaries of copyright. Some judge had to be first, and Annette was instrumental in convincing the judge to go our way on the issue.”
In January 2015, a district court judge rejected the parts of Fox’s suit against Dish involving copyright claims; the remainder of the case on contract issues was on hold until October, according to press reports. Dish settled its cases with CBS and The Walt Disney Co., owner of ABC, in 2014, and the lawsuit with NBC is ongoing.
Katzin recalls talking to Hurst about a technology issue and receiving an email from her much later. “The email said, ‘I’ve been thinking about this for two months, reading some cases, and have an idea,’“ he remembers. “The [gears] keep spinning. She’s part of the team and part of our family, looking out for our interests.”
During the Dish case, Hurst served as president of her children’s PTA. “My kids go to public school, which is not the first choice for most partners in a big law firm,” she says. “But I believe in public school as the cornerstone of democracy.”
She approached the PTA in the same way she practices law. “People really responded to the framing that we are a community because we care about each other’s kids and are willing to help each other so our kids succeed,” she says.
Becoming a mother was the reason Hurst left Howard Rice in 2005 after 15 years with the firm. “A very good mentor told me, ‘You have kids now, and you have to think if the bench is deep enough to balance work and family,’“ Hurst recalls. “I started thinking about that and worried that I needed to be at a bigger firm to be a successful rainmaker and mom of twins. Howard Rice was a great firm with incredibly smart people, but I needed a place where they had more people to pick up the slack when I needed slack.”
She doesn’t like the words “work-life balance,” preferring “work-life integration.” As she puts it, “I’m still a lawyer when I’m at home. It’s not like I leave that behind and it’s not part of who I am. And it’s the same thing at work; I don’t leave behind the fact that I’m a parent.”
Hurst represents technology companies at work, and spends a good chunk of her free time playing video games with her kids. “I’m a gamer mom,” she says. “I’m a sci-fi and fantasy fan and like the storylines of video games—it’s another storytelling form of art.”
She also likes the strategic thinking in games. After her son spent a 45-minute drive extolling the wonders of an iPad game called Terraria, Hurst purchased it, then she and her children devised a strategy to beat the game’s final boss, called “The Wall of Flesh.”
“We developed a whole elaborate plan to work together,” she says. “It’s an opportunity to use the strategic thinking I like without the high stakes of a trial.”
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