Frank Tosto

Frank Tosto  


Executive Summary

Frank Tosto focuses his practice primarily on IP litigation and directors' & officers' liability. He has litigated patent, trade secret, industrial design, trademark and copyright matters, including several "Bet-the-Company" actions, and has appeared at all levels of court throughout Canada — including acting as counsel in numerous motions and trials in the Ontario Superior Court of Justice, Alberta Court of Queen's Bench, and Federal Court of Canada. Frank also has an extensive background in insurance litigation and coverage issues.

Frank's appellate experience includes conducting matters in the Ontario and Alberta Courts of Appeal, the Federal Court of Canada (Appeal Division) and the Supreme Court of Canada (Leave Application). He has also appeared as counsel at the Trademarks Opposition Board, assisted clients with navigating through the Uniform Domain-Name Dispute Resolution process, and conducted several inquests, inquiries and appraisals. 

Representative Work

  • Represented both plaintiffs and defendants in "Bet-the-Company" patent and trade secret litigation concerning well-servicing equipment.
  • Obtained an Order striking the Statement of Claim in a patent infringement computer software case concerning drones which service the defence industry.
  • Represented corporation in a trademark dispute concerning a national advertising campaign.
  • Represented US Corporation in trademark and passing-off dispute permitting company to enter the Canadian marketplace.
  • Obtained copyright protection for marine seismic data.
  • Litigated case which determined the test for authorship of computer software programs in Canada.
  • Obtained an ex parte interlocutory injunction requiring any and all persons or other legal entities appearing to be in control of client’s domain name, website and email hosting account and a company’s social media accounts (including but not limited to, its Twitter and LinkedIn accounts) to allow the client to change the username and passwords without the rogue’s authorization.
  • Obtained an ex parte injunction shutting down a foreign website.
  • Conducted an 18-month trial concerning defective cement and associated insurance coverage issues.
  • Represented insurers in significant directors' matter including third-party liability and insurance coverage issues.
  • Represented private school in high-profile Fatality Inquiries Act matter.
  • Represented radiological technician in medical malpractice matter.
  • Represented defendants in litigation concerning the medication Ephedrine.
  • Represented both plaintiffs and defendants in high-profile defamation law suits.
  • Represented defendant concerning the electrical remediation of a high-rise building.
  • Conducted several procurement matters including an arbitration under the New West Partnership Trade Agreement.

Publications & Presentations

  • Co-Author, "Protecting Your Intellectual Capital in the Canadian Oil & Gas Industry," Alberta Law Review, November 2012.
  • Presenter, "Protecting Your Intellectual Capital in the Canadian Oil & Gas Industry," Canadian Energy Law Foundation, June 2012.
  • Presenter, "Civil Trial Advocacy College," The Advocates' Society, 2012, 2013 and 2014.
  • Presenter, "Directors' & Officers' Liability Insurance," The Chartered Insurance Professionals' Society, 2005, 2007 and 2009.
  • Author, "Insurance Coverage for Copyright Infringement Claims Under Commercial General Liability Policies," Canadian Insurance Law Service, May 2004.

Rankings & Recognitions

  • Recognized in the 2018 and 2019 edition of Best Lawyers in Canada (Intellectual Property Law).
  • Selected by peers for inclusion in the 2009 and 2010 editions of The Best Lawyers in Canada® (Insurance Law).